Patent-Resolution Process Perplexes Justices

     WASHINGTON (CN) — A testy U.S. Supreme Court hearing Monday offered few hints at the resolution of a case that could shake up future patent cases.
     Cuozzo Speeding Technologies v. Lee involves ambiguity in the dispute-resolution process created in the wake of the American Invents Act in 2011.
     While this law subjects parties to a process known as inter partes review, the previous system, inter partes re-examination, had been less adversarial, allowing patent holders to liberally amend any claims they brought to overcome deficiencies.
     Congress was silent on what standard the review board should apply to inter partes review, however, leading to the dispute before the high court Monday morning.
     Cuozzo holds the patent a device that shows a car’s speed alongside the posted speed limit for the particular area.
     GPS maker Garmin challenged the claims in Cuozzo’s patent in 2012, petitioning for inter partes review on the grounds that the GPS technology in Cuozzo’s system stepped on the toes of its technology.
     The patent board found Garmin unlikely to invalidate Cuozzo’s entire patent, but likely to prevail against three of the patent’s specific claims.
     Cuozzo petitioned the Supreme Court for review after the Federal Circuit affirmed 2-1 in July.
     Arguing for the Cuozzo at this morning’s hearing, attorney Garrard Beeney said Congress intended to install a “District Court-like” substitute in inter partes review, and that the board should thus use the same standard district courts use in deciding patent-infringement cases.
     “Finally, this court should reverse because the government really has not in any way offered a support of using the broadest reasonable interpretation that is in any way tethered to inter partes review,” Beeney said. “It simply says historically, we’ve done this before, and so we should be permitted to do it again.”
     Justice Elena Kagan questioned why the U.S. Patent and Trademark Office shouldn’t be able to use the broadest reasonable interpretation structure in it reviews, noting it does most of its other work under this standard.
     Beeney conceded that the America Invents Act is not clear about what standard the board should apply, but said silence by Congress on this issue left it for the judiciary to decide. He also said Congress’ creation of the inter partes review process is a totally unique issue for the Patent and Trademark Office.
     “I mean, arguing that one in inter partes review should use the broadest reasonable interpretation is really the quintessential example of trying to pound a square peg into a round hole simply because that peg used to fit a very different hole,” Beeney said.
     Beeney only spent a small portion of his time in front of the court arguing that his client should be allowed to appeal the board’s decision to conduct inter partes review, mostly just claiming the statute prevents only interim review.
     Justice Ruth Bader Ginsburg was skeptical of this claim, saying if that were the case, the law would be “doing no work.”
     When Assistant to the Solicitor General Curtis Gannon took the podium, he claimed the inter partes review process was not meant as a “little district court,” as Justice Stephen Breyer had contemplated, but something in between that and inter partes re-examination.
     He told Justice Sonia Sotomayor most cases would end up in the same place whether they were decided using the board’s standard or the standard that district courts apply.
     “Well, I do think that it is the case that in most circumstances, these two different forms of construction are going to end up in the same place,” Gannon said. “That’s true in most of the case law.”
     As to Beeney’s claim that the new process suppresses amendments, Gannon noted that only 13 percent of patent holders have even tried to amend their claims.
     Chief Justice John Roberts seemed baffled by the overlapping system Congress had put in place, repeatedly pressing Gannon this morning to explain it.
     Roberts seemed to buy Beeney’s argument that the inter partes review process was meant to substitute district court actions.
     “Why should we be so wedded to the way they do business in the PTO with respect to the broadest possible construction when the point is not to replicate PTO,” Roberts said. “It’s supposed to take the place of district court procedures.”
     Roberts was confused about why a decision from U.S. district court on a patent would not bind the Patent and Trademark Office and why the district court would not be bound by a decision from the Patent and Trademark Office.
     “I’m sorry, that seems to me to be a bizarre way to decide a legal question,” Roberts said. “How does it work? Whoever gets to the judgment first?”
     Sotomayor also questioned Gannon’s claim that Congress meant to prevent parties from appealing the Patent and Trademark Office’s decision to conduct inter partes review.
     “Why would Congress tell the PTO don’t do it, except in these limited circumstances, but nobody is going to ever watch you to make sure that’s what you’re doing,” Sotomayor asked.
     After Gannon’s time expired, Beeney used his limited rebuttal time to claim victory in the arguments.
     “Let me just begin by saying that as with the government’s brief, we heard nothing today that suggests that the use of the ordinary-claim construction would not accomplish Congress’ purpose,” Beeney said. “But what we would avoid is all of the bizarre harms that are caused by the use of the broadest-reasonable interpretation expedient.”

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