In Cuozzo Speed Technologies, Inc., v. Lee, the Supreme Court affirmed the Federal Circuit’s decision, upholding the PTAB’s use of the BRI standard for claim interpretation in IPRs, and determining that 35 U.S.C. § 314(d) bars judicial review of the PTAB’s decision to institute review on grounds not specifically raised in the IPR petition.
Continue Reading Supreme Court Upholds Use of BRI Standard in Cuozzo
The much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court. One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain. The following reflects the tenor of the remarks of seven of the Justices’ who spoke during oral argument. In keeping with his much reported practice at these arguments, Justice Thomas remained mute. The following discussion focuses exclusively on the arguments concerning whether or not the PTAB may employ the “broadest reasonable construction” standard in IPRs.
Continue Reading Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee
Last month, in Federal Express Corp. v. Qualcomm Inc., Appeal No. 2024‑1236 (Fed. Cir. Apr. 29, 2026), the Federal Circuit again addressed the reach of the statutory bar on its review of Patent Trial and Appeal Board decisions to institute inter partes reviews. The case arose from Qualcomm’s IPR petition challenging a FedEx patent
In 2020, Apple and several other parties collectively sued the Patent Office in a U.S. district court in California. They alleged that guidance* the Director gave the Patent Trial and Appeal Board—on how, while parallel patent litigation was pending, to exercise the Director’s discretion to deny inter partes review petitions—violated the Administrative Procedure Act (APA), particularly 5 U.S.C. § 706 (link). Apple Inc. v. Vidal, No. 20-CV-06128 (N.D. Cal. Mar. 31, 2024). Apple complained that the guidance led to too many discretionary denials of meritorious petitions and was otherwise also legally defective. When the lawsuit was filed, the Board made these institution decisions. Today, the Director does. The guidance is therefore largely meaningless unless the Director again delegates this task to the Board. Nonetheless, the Federal Circuit recently affirmed the district court’s rejection of Apple’s APA challenge. Apple Inc. v. Squires, Appeal 2024-1864 (Fed. Cir. Feb. 13, 2026).
Continue Reading The Propriety and Cost of Discretionary Denial
Practitioners before the Patent Trial and Appeal Board are well-acquainted with the statutory bar on judicial review of institution decisions. But what happens when the Board defers—for more than a year—a decision to rehear its non-institution decision, waiting for the Federal Circuit to clarify claim construction in parallel litigation involving the same patent and same parties? In Ethanol Boosting Systems, LLC v. Ford Motor Company, Appeal 2024-1381 (Fed. Cir. Dec. 23, 2025) (“EBS”), the Federal Circuit addressed this scenario, providing a practical reminder of the limits of appellate review and the Board’s procedural discretion.
Continue Reading PTAB’s Delay in Instituting IPRs Is Not Reviewable on AppealOn April 20, 2020, the Supreme Court held that PTAB decisions instituting IPR are final and non-appealable and that the language of 35 U.S.C. § 314(d) “indicates that a party generally cannot contend on appeal that the agency should have refused “to institute an inter partes review.” Thryv Inc. v. Click-To-Call Technologies LP, case number 18-916, 2020 WL 1906544 at *4, __S.Ct. __ (2020).
Continue Reading PTAB Determination on One-Year Time Bar Cannot be Appealed
The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.
Continue Reading PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice
For AIA trial petitions filed after November 12, 2018, the Patent Trial and Appeal Board will construe claims challenged and proposed to be amended (narrowed) in these proceedings using the same claim construction standard that is used to construe the claim in a civil action in federal district court. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In these trials, the Board will also consider claim construction determinations made in proceedings in district courts or the International Trade Commission. A recent Federal Register notice includes the text of rules the Patent Office revised to implement these changes.
Continue Reading Rule Changes Will Advance a Famous Judge Rich Axiom
Absent extraordinary circumstances, the Federal Circuit will not review Patent Trial and Appeal Board decisions refusing to institute inter partes review. The statute and a 2016 Supreme Court decision prohibit such review. 35 U.S.C. § 314(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140–42 (2016) (clarifying, however, that appellate review is appropriate to address “shenanigans”). The Federal Circuit has thus repeatedly held that parties may not sidestep this prohibition by styling an appeal as a petition for a writ of mandamus.[1] The court reiterated as much again in In re Power Integrations, Inc., Appeal Nos. 2018‑144, ‑145, ‑146, ‑147 (Fed. Cir. Aug. 16, 2018).
Continue Reading No Mandamus Relief from Shenanigan-less Non-institution Decision