Supreme Court grants Certiorari in Challenge of Inter Partes Review Proceedings

by Dennis Crouch

The Supreme Court has granted writ of certiorari in the pending Inter Partes Review challenge of Cuozzo Speed Tech v. Lee, Docket No. 15-446.

Questions Presented:

Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Nine briefs amici were filed at the petitions stage. I expect that number will double for the merits stage.

More from Patently-O on the case: https://patentlyo.com/?s=cuozzo

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The court also granted certiorari for a second time Kirtsaeng v. John Wiley. This time, the focus is on the award of attorney fees to the prevailing party in copyright cases.

Question Presented:

What constitutes the appropriate standard for awarding attorneys’ fees to a prevailing party under section 505 of the Copyright Act.

Section 505 (17 U.S.C. 505) states that: “the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.” However, there is a circuit split as to when it should be awarded. According to the petition:

The Ninth and Eleventh Circuits award attorneys’ fees when the prevailing party’s successful claim or defense advanced the purposes of the Copyright Act. The Fifth and Seventh Circuits employ a presumption in favor of attorneys’ fees for a prevailing party that the losing party must overcome. Other courts of appeals primarily employ the several “nonexclusive factors” this Court identified in dicta in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994). And the Second Circuit, as it did in this case, places “substantial weight” on whether the losing party’s claim or defense was “objectively unreasonable.” Matthew Bender & Co. v. W. Publ’g Co., 240 F.3d 116, 122 (2d Cir. 2001).

As a reminder, in Kirtsaeng I, the Supreme Court ruled that copyright exhaustion (first sale doctrine) applies to international sales of the copyrighted work that were lawfully made abroad. This rule is opposite to that in patent cases (Jazz Photo), but the issue is core to the pending en banc Lexmark case. A decision is expected any day in Lexmark.