The PTAB Waits for No One—Certainly Not the Supreme Court

Posted by Ed Walsh on Mar 9, 2016

We recently commented on the uncertainty that will prevail until the Supreme Court issues its decision on the proper claim interpretation to apply in post-grant trials. If the Supreme Court finds that the PTAB, in applying the broadest reasonable claim interpretation, is impermissibly invalidating claims, that would call into question many IPR decisions—including many that will be issued between now and when the Supreme Court decides In re: Cuozzo Speed Technologies, which is likely to happen before the Court’s term ends in June.

Some of the uncertainty was lifted with a decision in five related IPRs, including B/E Aerospace v. MAG Aerospace Industries, IPR2014-01510 (Paper 105). We now know what the PTAB will not do: wait for the Supreme Court to decide. At least, the PTAB will not wait if doing so would extend the date of its final written decision beyond the one-year limit set by Congress in authorizing IPRs.

Though Congress gave the PTAB leeway to delay issuing a final written decision for 6 months past the one-year limit if there is good cause, the panel in B/E Aerospace rejected the patent owner’s request to do so. The PTAB did not consider waiting for the Supreme Court to decide whether the PTAB is using the correct claim interpretation to be a sufficient reason. Rather, this PTAB panel was persuaded by the fact that no other panel had gone past the one-year limit. Moreover, the PTAB considered the delay while waiting for the Supreme Court to be outweighed by its mandate to administer speedy and inexpensive justice.

Nor was the possibility of other court decisions relating to the availability of assignor estoppel in IPRs, which also might impact these cases, enough to tip the scales for this panel. The PTAB observed that potentially game-changing appeals are pending while many cases are active, so there is nothing that sets this case apart enough to qualify as “good cause” for extending the one-year deadline.

Perhaps, as the decision in Cuozzo gets nearer, PTAB panels will be more receptive to requests to delay final written decisions, if doing so will not extend the IPR past the one-year limit. But for now, patent owners who think the PTAB is using the wrong claim interpretation standard may just need to keep the issue alive for appeal.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.