Patent Board, Federal Courts Still Held to Different Standards


The Supreme Court has left in place differences in patent review standards that the life sciences industry has criticized.

The high court denied Merck & Cie’s request for review of a decision by a panel of the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit uses a different standard to review decisions by the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), which makes it more difficult to overturn a PTAB decision than one issued by a federal district court.

In the Federal Circuit’s denial of Merck & Cie’s petition that the full appeals court review the three-judge panel’s decision invalidating patent claims, four of the Federal Circuit judges suggested there are benefits to having the same standard for the PTAB and district courts and blamed Congress for the lack of clarity on the issue.

Judge Kathleen M. O’Malley wrote that Congress knew how to make the standards the same when it was writing the America Invents Act that created the PTAB and its new patent validity proceedings, yet didn't do so. And that is “not an inconsistency or oversight I believe we can correct,” she stated.

The same day that it denied review in Merck & Cie v. Gnosis, the Supreme Court did the same in MCM Portfolio LLC v. Hewlett-Packard Co., rejecting a petition that questioned the constitutionality of PTAB proceedings. And on June 20, the high court in Cuozzo Speed Techs., LLC v. Lee upheld in a decision the PTAB's use of the “broadest reasonable interpretation” (BRI) standard for determining the meaning of disputed patent claim terms rather than the “plain and ordinary meaning” standard used in federal courts.

The Supreme Court appears to have basically let the 6-year old PTAB carve out its place in the world. “The decision is bad for patent owners, especially for biopharmas,” Bernard Knight, a patent litigator with McDermott, Will & Emery, in Washington, and former PTO general counsel, told me in a June 21 interview after Cuozzo was issued.

He noted that the Cuozzo decision expanded the PTAB’s authority. “These little court battles aren't where they should be looking for a remedy. They should be looking to Congress,” he said.

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