On February 4, 2015, the Federal Circuit issued its first opinion from an appeal of the merits of inter partes review ("IPR") decided by the USPTO. In In re Cuozzo Speed Techs, LLC, the Federal Circuit affirmed the USPTO's decision to invalidate a patent during an IPR because it was obvious in light of the prior art. The patent holder appealed on several grounds. Most of the grounds for appeal went to the merits of the IPR and will likely not have an effect on other IPR appeals. Two of the grounds for appeal, however, were directed at procedural issues that will affect other IPR appeals.
First, the patent holder argued that the USPTO erroneously granted the petition to institute the IPR. Although the America Invents Act (AIA) provides that decisions of the USPTO to institute an IPR are final and nonappealable, the patent holder argued that provision merely prohibits interlocutory appeals. The Federal Circuit disagreed holding that it lacks jurisdiction to review the USPTO's decision to institute an IPR.
Second, the patent holder argued that the USPTO erred by construing the claim terms of the patent using the broadest reasonable interpretation (BRI) instead of the narrower plain and ordinary meaning used in litigation. Again, the Federal Circuit disagreed explaining that the USPTO uses BRI during prosecution and reexamination of patents, and, hence, it should also use BRI for IPRs. Judge Newman filed a vigorous dissent. She argued that because IPRs are more like litigation than prosecution, the USPTO should use the same narrower claim construction standard used in litigation, not the BRI used in patent prosecution. She also believed that the decision to institute an IPR should be appealable because there should be oversight of the rulings made by the USPTO. Thus, she believes that it makes more sense to interpret the AIA provision about finality of decisions to institute IPRs as merely precluding interlocutory appeals. Given Newman's dissent, it is possible that the Federal Circuit may reconsider this case en banc or that the U.S. Supreme Court may review this case to address these procedural issues.