On Wednesday, February 4, 2015, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) finding that Cuozzo Speed Technology LLC’s patent is invalid—in addition to upholding the PTAB’s broadest reasonable interpretation claim construction standard—in the first ever inter partes review (IPR) case heard on appeal. IPR was introduced by the America Invents Act (AIA) of 2011 and became available on September 16, 2012. IPR, along with the AIA’s new post-grant review, replaced the Patent Act’s inter partes reexamination procedure. Not only was the decision on Wednesday the first IPR appeal heard by the CAFC, Garmin International Inc.’s challenge to Cuozzo’s patent in 2012 was also the first ever request for IPR.
In 2013, the PTAB found Cuozzo’s US Patent No. 6,778,074, which is titled “[s]peed limit indicator and method for displaying speed and the relevant speed limit,” obvious in light of prior art. In its decision published on Wednesday, the CAFC affirmed the PTAB’s finding of obviousness. More notably, the CAFC also upheld the PTAB’s “broadest reasonable interpretation” claim construction standard that it applies to IPRs. Cuozzo argued—and Judge Pauline Newman agreed in her dissent—that the PTAB should use the same, narrower claim construction standard employed by district courts, which the ordinary-and-customary-meaning standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). However, the AIA is silent as to the claim construction standard to be used during IPR, merely stating instead that IPR rulemaking authority is conveyed to the PTO. 35 U.S.C. § 316(a)(2), (a)(4). In its decision, the CAFC held that “[p]ursuant to this authority, the PTO has promulgated 37 C.F.R. § 42.100(b), which provides that ‘[a] claim in an unexpired patent shall be given its broadest reasonable construction.’” Slip op. at 11. The CAFC then affirmed the PTAB’s use of its broadened claim construction standard for multiple reasons. First, the CAFC reasoned that the PTAB has applied its broadened standard “for more than 100 years in various types of PTO proceedings,” including pre-AIA inter andex partes reexamination and interference proceedings, and circuit courts have likewise approved that standard on appeal for more than a century. Id. at 12. Second, the CAFC noted that “[i]t would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.” Id. (internal citations omitted). Third, the CAFC found no indication in the text of the AIA that it was designed to change the claim construction standard that the PTO has applied for more than 100 years. Id. at 13. Additionally, the CAFC held that the PTAB’s decisions of whether or not to institute an IPR is not appealable. Id. at 6-10 (citing 35 U.S.C. § 314(d)).
In re Cuozzo Speed Technologies, LLC, no. 2014-1301, slip op. (Fed. Cir. Feb. 4, 2015) (on appeal from the PTAB in No. IPR2012-00001).