Today, the full U.S. Court of Appeals for the Federal Circuit denied Cuozzo Speed Technologies LLC’s petition for en banc rehearing of the panel decision inIn re Cuozzo Speed Technologies, LLC, Case No. 2014-1301, slip op. (Fed. Cir. July 8, 2015). That panel ruling, inter alia, approved the Patent Trial and Appeal Board’s use and application of the “broadest reasonable interpretation” standard for claim constructions in trial proceedings under the America Invents Act (such as, inter partes review and covered business method review proceedings). We previously reported on the original panel decision in In re Cuozzo Speed Technologies, LLC here.
In the inter partes review proceeding on appeal in Cuozzo, the Patent Trial and Appeal Board construed claim terms under the “broadest reasonable interpretation” standard and determined that the three challenged claims were unpatentable as obvious under 35 U.S.C. § 103. Cuozzo Speed Technologies LLC appealed that final decision to the Federal Circuit, where a panel (consisting of Circuit Judges Newman, Clevinger, and Dyk) upheld the Patent Trial and Appeal Board’s claim construction and unpatentability findings. Thereafter, Cuozzo Speed Technologies LLC petitioned for the full Federal Circuit to rehear the matter en banc.
The 6-5 ruling denying that petition included:
- A concurring opinion filed by Circuit Judge Dyk (who also filed the majority panel opinion), in which Circuit Judges Lourie, Chen, and Hughes joined;
- A dissenting opinion filed by Chief Judge Prost, in which Circuit Judges Newman, Moore, O’Malley, and Renya joined; and
- A dissenting opinion filed by Circuit Judge Newman (who also dissented from the majority panel opinion).
The concurring opinion in support of the Order denying rehearing en bancemphasized that “[t]he PTO has applied the broadest reasonable interpretation standard in a variety of proceedings for more than a century,” “[n]othing in the American Invents Act (‘AIA’) indicates congressional intent to change the prevailing broadest reasonable interpretation standard,” and “pending bills” provide Congress with an opportunity to change the standard should Congress desire to do so. Among those “pending bills” is the Protecting American Talent and Entrepreneurship Act of 2015, or PATENT Act (S. 1137).
The dissenting opinions challenge both the Order denying rehearing en bancand the majority panel ruling by comparing trial proceedings under the America Invents Act to “district court adjudications” (see dissenting opinion of Chief Judge Prost, at *5) and citing to “commercial, economic, and pragmatic” concerns raised by various amici curiae (see dissenting opinion of Circuit Judge Newman, at *3).
Today’s Order by the Federal Circuit may not be the final word on the “broadest reasonable interpretation” claim construction standard in trial proceedings under the America Invents Act. As noted by Circuit Judge Dyk’s concurring opinion, Congress may propose changes to the Patent Trial and Appeal Board’s claim construction standard (e.g., so that it is commensurate with that used by district courts). U.S. Patent and Trademark Office rulemaking and evolving Patent Trial and Appeal Board trial practice may also impact Cuozzo’s future application. And, Cuozzo Speed Technologies LLC may seek guidance from the U.S. Supreme Court.