On February 4, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB” or “Board”) first inter partes review (“IPR”) Final Written Decision. In fact, In re Cuozzo Speed Technologies, LLC. was the first appeal of any IPR Final Written Decision, and it related to the first IPR ever filed. As such, this case was significant not only for its substance, but for what the Federal Circuit said regarding some of the more controversial rules promulgated by the Patent Office for IPR proceedings. With regard to the substance of this case, the Federal Circuit agreed with the Board that the reviewed claims in Cuozzo’s patent were invalid as obvious over the prior art. In this case, the claimed technology was directed to indicating speed limits at particular locations on GPS units. The 2-1 decision was written by Judge Dyk and joined by Judge Clevenger. Judge Newman dissented, in part, because she believed that several rulings of the PTAB were contrary to the legislative intent behind the creation of the PTAB and IPR proceedings.

One of the first issues resolved by the Federal Circuit was whether it could review the Board’s decision to institute an IPR proceeding in the first place. Importantly, the Federal Circuit held that the statute barred any such review, even when the institution is contrary to the plain language of the statute. In this case, the Board instituted the review on grounds not specifically identified in the petition, although all of the art the Board cited was found therein. The Federal Circuit’s decision, however, did not note this distinction as significant. Instead, it went on to state that even if the Board were to go beyond the statute and institute an IPR based on prior public use, such an action would not be appealable. The Federal Circuit suggested that mandamus might be available when the Board exceeds its authority, but even that was not certain. A petitioner would first need to demonstrate that mandamus relief was not barred by the statute, that it had a clear and indisputable right to the issuance of a writ, and that the writ was appropriate under the circumstances. The Federal Circuit indicated that none of these elements had been demonstrated in this case.