On February 4, 2015, the United States Court of Appeals for the Federal Circuit issued its first precedential decision reviewing a completed inter partes review (IPR) proceeding under the America Invents Act. The Court held that the broadest reasonable interpretation standard is appropriate for claim construction in IPR proceedings and the Patent Trial and Appeal Board’s (PTAB) decision to institute an IPR is not reviewable, including on appeal after the PTAB renders its final written decision.
In In re Cuozzo Speed Technologies, LLC. (2014-1301) – the Federal Circuit’s first decision reviewing a PTAB Final Written Decision – the Court affirmed the PTAB’s finding that the claims under review were invalid as obvious. More importantly, the Court spoke for the first time on several important IPR issues, including claim construction, motions to amend, and appeals after a final written decision from the PTAB.
In September 2012, Garmin International Inc. filed an IPR petition challenging the claims of U.S. Patent No. 6,778,074, owned by Cuozzo Speed Technologies. The patent was directed to a speed limit indicator that displays the current speed of a vehicle and how it relates to the legal speed limit for the current location in which the vehicle is traveling. Although Garmin initially alleged over 40 challenges to the claims under both 35 U.S.C. §§102 and 103 in light of seven prior art references, the PTAB trimmed down the challenges to just two obviousness combinations.
The claims under review required, inter alia, “a speedometer integrally attached to [a] colored display.” Cuozzo argued that the term “integrally attached” should be construed as “joined or combined to work as a complete unit.” Cuozzo’s claim construction was formulated to cover Garmin’s GPS devices that displayed both the vehicle’s speed and the speed limit in a single LCD display. The PTAB rejected Cuozzo’s construction, instead construing the term as “discrete parts physically joined together as a unit without each part losing its own separate identity” – using the “broadest reasonable” interpretation claim construction standard.
The PTAB held that Cuozzo’s proposed construction effectively converted the claim feature into an “integral display” containing both the speed of the vehicle and the speed limit, rather than a speedometer attached to a colored display that shows the speed limit. The PTAB ultimately denied a proposed motion to amend the claims and found the claims unpatentable over two prior art combinations.
On appeal, the Federal Circuit affirmed. The opinion, by Judge Dyk and joined by Judge Clevenger, tackled the important question of whether the “broadest reasonable” interpretation standard was appropriate for claim construction in an IPR proceeding. Below, the PTAB found that the term “integrally attached,” which appears in claim 10, was central to the patentability analysis of the claims. The PTAB applied the broadest reasonable interpretation standard, construing the term “integrally attached” to mean “discrete parts physically joined together as a unit without each part losing its own separate identity.”
Cuozzo argued that the PTAB should not have applied the broadest reasonable interpretation standard, and should have used the Philips standard instead. In its decision, the Court noted that the AIA statute does not resolve the issue, and deferred to the USPTO’s rule-making authority and the USPTO’s “100 year history” of applying the broadest reasonable interpretation standard in USPTO proceedings.
The Court also took on the question of whether the PTAB improperly instituted IPR on some of the claims on the basis of prior art that Garmin did not identify in its petition. The Court held that while the AIA requires that prior art be identified in the petition, another section states that the determination whether to institute IPR is “final and nonappealable.” Previous Federal Circuit decisions have held that the AIA’s no-appeal provision precludes interlocutory appeal of the grant of an IPR.
Here, the Federal Circuit held for the first time that that 35 U.S.C. 314(d) prohibits review of the decision to institute IPR even after a PTAB final written decision. (Interestingly, on the merits, the Court held that that the IPR statute does not “expressly limit the PTAB’s authority at the final decision stage to the grounds alleged in the IPR petition.”) Further, the Court analyzed whether a writ of mandamus could issue to review the decision to institute an IPR. Because the Court found that Cuozzo did not meet the requirements for mandamus, it did not reach the question of whether 35 U.S.C. 314(d) bars mandamus.
In her dissent, Judge Newman stated that the broadest reasonable interpretation standard is inappropriate because it is based on the unfettered ability to amend in normal prosecution, which is – practically speaking – not available in an IPR. She also pointed to the IPR’s adjudicative, rather than examinational, nature. On whether a party should have the opportunity to appeal an institution decision, Judge Newman questioned whether the AIA meant to completely foreclose judicial review in all cases, even if a statutory violation occurs or there is a serious error below.
The Cuozzo decision is a victory for patent challengers looking to file post-grant review petitions under the most challenger-friendly claim construction standard.