The first Federal Circuit decision from an appeal of a Final Written Decision in an Inter Partes review (IPR) affirmed the Patent Trial and Appeal Board (PTAB) on all grounds. In re Cuozzo Speed Technologies, Inc., 2014-1301 (Fed. Cir. Feb. 4, 2015). The decision clarifies several issues affecting AIA Trials:
- PTAB decisions on whether to institute IPR are non-appealable;
- Claims are to be given their broadest reasonable interpretation in IPR; and
- A motion to amend the patent in an IPR may not introduce substitute claims that "would encompass any apparatus or claim that would not have been covered by the original claims."
Cuozzo Speed Technologies, Inc. (Cuozzo) is the assignee of U.S. Patent No. 6,778,074 (the '074 patent), titled "Speed limit indicator and method for displaying speed and the relevant speed limit." Garmin International, Inc. and Garmin USA, Inc. (collectively, Garmin) petitioned for IPR of claims 10, 14, and 17 of the '074 patent.1 Garmin filed the petition on September 16, 2012, the first day on which IPR became available, and the resulting IPR was the first IPR ever instituted.2 The PTAB instituted IPR on all of the challenged claims, and ultimately determined the claims to be unpatentable as obvious. The PTAB also denied Cuozzo's motion to amend the patent by substituting new claims 21 to 23 in place of the challenged claims.3
Decisions on Whether to Institute are Non-Appealable
On appeal, the Federal Circuit confirmed that a decision to institute an IPR is non-appealable. 35 U.S.C. § 314(d) provides that "a determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." Having previously held that § 314(d) precludes an interlocutory review of the Director's determination to institute an IPR, the Federal Circuit "conclude[d] that § 314(d) prohibits review of the decision to institute IPR even after a final decision."4 Thus, the Federal Circuit "lack[s] jurisdiction to review the PTO's decision to institute IPR." The court did not decide whether mandamus review is available. Nevertheless, the court noted that the circumstances in In re Cuozzo would not warrant such a review.5
Thus, the decision underscores the importance of the petition for IPR and the patent owner's response to the petition. If the petition is denied, it is likely that the petitioner may not get another bite at the apple. Not only may a petitioner have missed the one-year statutory deadline for filing, there are also several informative PTAB decisions that weigh heavily against being able to reassert the same or related grounds of invalidity in a petition.
The Broadest Reasonable Interpretation is the Correct Standard
The Federal Circuit also confirmed that the broadest reasonable interpretation (BRI) standard adopted by the PTO governs AIA trials.6 To reach that conclusion, the Court considered the history of the broadest reasonable interpretation standard, the congressional intent behind the inter partes review, and the Chevron factors.
The Federal Circuit applies the BRI "in every PTO proceeding involving unexpired patents."7 The policy behind the BRI is that "[a]pplic[ation of] the broadest reasonable interpretation standard 'reduce[s] the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified.'"8 The Court found no indication that the AIA changed this standard for post-grant proceedings. While Congress did not specify that the BRI is to govern, the court "inferred that Congress implicitly applied the existing rule of adopting the broadest reasonable construction."9 The Court noted that, notwithstanding the limited opportunity to amend claims, IPRs are like other USPTO proceedings in that they allow for amendments.10 The Court also considered the BRI standard under the Chevron factors and determined that the standard was properly adopted.11 Thus, the Federal Circuit's decision affirmed that in an IPR, claims are to be given broader interpretation than the "ordinary and customary meaning" to a person of ordinary skill in the art at the time of the invention, as applied at the district court under Philips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005).
On the Merits
Turning to the merits, the Federal Circuit affirmed the PTAB decision on all grounds: (1) claim construction; (2) obviousness; and (3) denial of motion to amend. Since there was no issue as to extrinsic evidence, claim construction was reviewed de novo.12 The Court determined that the PTAB correctly interpreted the claims based on the intrinsic evidence.13 Moreover, the PTAB also correctly decided that the challenged claims were obvious.14
A Substitute Claim May Not Encompass any Apparatus or Claim That Would Not Have Been Covered by the Original Claims
The Federal Circuit also affirmed the PTAB's denial of Cuozzo's motion to amend its patent claims. Specifically, the Federal Circuit determined that the PTAB correctly denied Cuozzo's motion to amend because the substitute claims would have enlarged the patent's scope.15 The statute and PTO's regulation governing rules to amend prohibit amendments that would broaden claim scope.16 However, neither the statute nor the PTO's regulation specifies how to decide whether an amendment is broadening. The Federal Circuit determined that an assessment as to broadening should be based on the same test used in reissues and reexaminations.17Specifically, "a claim 'is broader in scope than the original claim if it contains within its scope any conceivable apparatus which would not have infringed the original patent.'"18 Since Cuozzo's proposed substitute claims would encompass a single-LCD embodiment, which was not encompassed by the original claims, the motion to amend was properly denied for introducing a broadening amendment.19 Thus, in a motion to amend, a patentee can only introduce a substitute claim that encompasses an apparatus or claim that would have been covered by the original claims.
The Dissent – the Broadest Reasonable Interpretation Defeats the Congressional Intent of AIA Trial
Circuit Judge Newman dissented from the majority opinion. In her dissent, Judge Newman cited a House Report, which states that "[t]he intent of the post-grant review process is to enable early challenges to patents."20 Judge Newman reasoned that "[t]o implement the intent of the America Invents Act, the administrative judges of the PTAB must apply the same procedural and substantive law as the district court."21As such, "the procedures whereby claims are given their broadest reasonable interpretation instead of their correct constructions defeats the purpose of Inter Partes Review as a surrogate for district court litigation."22Judge Newman also noted that § 314(d) "requires thoughtful adjustment to the legislative purpose, not heavy handed foreclosure of all review of any anything related to the petition."23
Applicability to Post-Grant Reviews and Covered Business Method Reviews
The In re Cuozzo decision only applies to IPRs. Nevertheless, because of similarities in the statutory language and rules, the decision may be equally applicable to Post Grant Reviews (PGRs) and Covered Business Method Reviews (CBMs). For example, the rationale for the broadest reasonable interpretation standard is equally applicable to PGRs and CBMs. In PGRs, similar to IPRs, the statute also provides that decision as to "whether to institute a post-grant review...shall be final and non-appealable."24 The AIA also provides that decisions to institute a CBM are also final and non-appealable.25 Thus, since the relevant statutes for CBMs and PGRs provide that decisions to institute are final and non-appealable, it is likely that a court would follow the reasoning of In re Cuozzo and not review a challenge on a decision to institute in a CBM or PGR. In addition, like IPRs, CBMs and PGRs contain similar statutory language and regulations that prohibit the introduction of broadening claims in a motion to amend.26 Thus, it would appear that the In re Cuozzo test for whether a claim amendment is broadening is equally applicable to CBMs and PGRs.
While the Federal Circuit's decision in In re Cuozzo provides some guidance as to the conduct of IPRs, the full import of the decision has yet to play out. Cuozzo may still petition the Federal Circuit for en banc review, particularly given Judge Newman's dissent, and should that fail, Cuozzo may petition to the Supreme Court for certiorari. Venable will continue monitoring the development of this case and other IPR-related developments.