PTAB Chief Judge:Don't Sweat Cuozzo

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By Joseph Marks

July 20 — The Patent Trial and Appeal Board's chief judge has a message for patent holders concerned about the U.S. Supreme Court’s Cuozzo decision: Stop worrying.

The Supreme Court’s June 20 opinion in Cuozzo Speed Technologies LLC v. Lee upheld the PTAB’s practice of reading patent claims according to their broadest reasonable interpretation during validity challenges. That decision has caused anxiety among some patent holders, who say killing their patents will become far too easy.

In practice, however, “In nine out of 10 cases, actually, it’s not going to make a difference,” Lead Judge Michael Tierney told an audience of patent attorneys July 20.

“I’ve had cases where it does make a difference. It’s just not that often,” Tierney said during an address at the Patents for Financial Services Summit held in New York and organized by World Congress.

In Defense of the PTAB

Tierney also offered a full-throated defense of the PTAB’s patent review process, which was greatly expanded by the 2011 America Invents Act, calling it “a quality check on the system.”

PTAB reviews, which are often brought by defendants in patent infringement cases in district courts, also increase the pressure to settle cases, he said, reducing the burden on business.

“What you see is a lot of settlements occurring pre-institution [of a patent review],” he said. He said he's heard that “not only do people settle before institution, they settle before even filing. They use it as a tool to, at least, get the negotiation and settlement going.”

Word War III

Tierney also addressed a recent rule change that switched from a page limit to a word limit for PTAB filings, giving parties more leeway to include illustrative figures.

One party to a PTAB case recently alerted him that the opposing side had exceeded its total word count on a filing because of words included inside figures. With those words, the filing was 50 words over the limit.

“If someone’s missed it because of a figure where there were some extra words— if it’s egregious, by all means, bring it to my attention,” he said. “If we’re talking 50 words on a 14,000 or even 5,600 [word limited document], we have better things to argue about, I would hope.”

To contact the reporter on this story: Joseph Marks in New York at jmarks@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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