Digging Deep into Cuozzo: Shareholder (and former Director of USPTO) Q. Todd Dickinson Shares Commentary

Polsinelli shareholder (and former Director of the USPTO) Q. Todd Dickinson was quoted in the IAM blog yesterday on the Supreme Court's decision on Cuozzo v. Lee.  View the full post here.

Dickinson further shares:

In most ways, this decision reaffirms the status quo of the IPR process in the USPTO, particularly the use of the Broadest Reasonable Interpretation (BRI) standard for claim construction. This comes despite the fact that both the House and the Senate Judiciary Committee have previously voted to shift to the Phillips standard, so any change will either have to come from Congress or perhaps the new Administration.

Regarding the appealability of the institution decision, however, the result is somewhat less certain. While the majority generally affirmed the Federal Circuit view that the statute means what it says, i.e. the decision to institute the IPR is not appealable per se, in view of the dissent’s concern about the potential for the PTO to exceed its authority or Congressional intent, the majority parsed its opinion somewhat, drawing a distinction between “ordinary dispute[s]” over “minor technicalities” and a situation ”that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.” While overall institution appeals go down, this latter language should provide some relief in particular circumstances, and a continuing development of jurisprudence in this area.