The Court of Appeals for the Federal Circuit denied Cuozzo Speed Technology LLC’s petition for en banc rehearing of a Federal Circuit panel’s February decision. The February decision affirmed the Patent Trial and Appeal Board’s (PTAB) use of the “broadest reasonable interpretation” claim construction standard. The Court split 6-5 in its decision. As a result, the court upheld the United States Patent and Trademark Office’s (USPTO) long-held “broadest reasonable interpretation” claim construction practice.1 While the Federal Circuit recently overturned an American Invents Act (AIA) review, it still appears that the Federal Circuit will tend to uphold appeals from AIA decisions.2 Congress continues to consider making a change.
The majority, led by Circuit Judge Timothy Dyk, was not persuaded by Petitioner’s arguments for why the PTAB should employ the same claim construction standard as district courts.3 He then pointed towards pending legislation which would require the PTAB to employ the same claim construction standards of the district court.4 In contrast, the strongly-worded dissent drafted by Chief Judge Sharon Prost drew a distinction between patent prosecution and inter partes review (IPR) cases where there is no back-and-forth between Patent Owner and the USPTO. She also insisted that the Federal Circuit’s “background of existing law not only fails to support the conclusion drawn by the panel majority, it points to the opposite result.”5 While denying the Cuozzo’s petition for rehearing, the Court granted Cuozzo’s motion for a clarified opinion. The Court’s opinion was consistent with Microsoft v. Proxycon, but provided little additional guidance beyond that opinion.6
Nothing in In re Cuozzo indicates an upcoming refinement of the “broadest reasonable interpretation” standard at the PTAB. Additional cases regarding what constitutes a “reasonably broad” claim construction will provide guidance for Practitioners at the PTAB, but Practitioners should expect the Federal Circuit to uphold “reasonably broad” claim construction at AIA trials until told otherwise. Congress continues to consider new USPTO claim construction requirements in pending legislation which may mandate, among other things, that the PTAB employ the same claim construction standard as district courts. The Senate and House bills have strong support from the public and the business community. If this refined legislation passes, the PTAB will be forced to construe claims at AIA trials in the same way as in district court proceedings. If Congress fails to pass the pending patent bills, a Supreme Court decision may be the only event that will change claim construction in USPTO proceedings in the foreseeable future.
This case highlights one of a number of hotbed issues currently at play in AIA review and in the debate over patent rights. PTAB decisions, judicial opinions and legislative changes will continue to impact the strategy employed in IPR proceedings as well as other post-AIA activities. The details of how a district court claim construction would play out at the PTAB have not yet been determined. The limited discovery and accelerated timeline of an AIA trial is not very amenable to district court claim construction practices. If a new claim construction standard is required, the PTAB may be forced to alter discovery scope and timelines, and potentially procedure.