Digest of In Re Cuozzo Speed Technologies, LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2105) (precedential). On appeal from USPTO PTAB. Before Newman, Clevenger, and Dyk.
Procedural Posture: Patent holder Cuozzo Speed Technologies appealed the United States Patent and Trademark Office’s (USPTO) decision to institute inter partes review (IPR) and the USPTO Patent Trial and Appeal Board’s (PTAB) denial of motion to amend claims and final decision finding obviousness. CAFC lacked jurisdiction to review decision to implement IPR and affirmed otherwise.
- Inter Partes Review: 35 U.S.C. § 314(d), which provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable,” bars all review of the USPTO’s decision to institute IPR, including after a final decision by the PTAB. On its face, § 314(d) is written to exclude all review of the decision to institute IPR, not to preclude review only before a final decision.
- Inter Partes Review: A flawed decision to institute IPR, based on a petition that failed to cite all of the references as relied upon by the final decision, is not a basis for setting aside the final decision. The fact that a petition is defective is irrelevant because a proper petition could have been drafted.
- Inter Partes Review: Mandamus may be available to challenge the USPTO’s decision to institute IPR after the PTAB’s final decision in situations where the USPTO has clearly and indisputably exceeded its authority. Here, however, the conditions required for mandamus, which include that the petitioner show a clear and indisputable right to issuance of a writ, were not satisfied. It is not clear that IPR is strictly limited to the grounds asserted in the petition, and it is arguable that the petition asserted the omitted references against the independent claim by asserting them against dependent claims.
- Inter Partes Review: The PTAB properly applied the broadest reasonable interpretation standard in claim construction. Congress, in enacting the America Invents Act (AIA), impliedly adopted this standard, as it was aware both that this was the prevailing rule in various types of USPTO proceedings and of the differences in opportunity to amend between IPR and these other proceedings. Even if Congress did not impliedly adopt this standard, § 316(a)(2) and (a)(4), which provide that the Director shall proscribe regulations “setting forth the standards for the showing of sufficient grounds to institute a review” and “establishing and governing inter partes review . . . and the relationship of such review to other proceedings,” expressly provide the USPTO with rulemaking authority to establish this standard.
- Inter Partes Review: The PTAB properly denied Cuozzo’s motion for leave to amend, as the proposed amendments would have broadened the claims, which is barred in IPR under § 316(d)(3). The test of whether a claim is broader is whether it covers any apparatus or process which would not have infringed the original claim. The proposed amended claim language would cover an embodiment that includes both the speedometer and the color display in one LCD, which is not covered by the previous claim language of “a speedometer integrally attached to said colored display,” based on the proper construction of “integrally attached.”
- Inter Partes Review: Adopting the broadest reasonable interpretation standard defeats the legislative intent of IPR to substitute administrative adjudication for district court adjudication, as this standard is not the same as in district courts where claims are given their correct construction as understood by a person of ordinary skill in the field of the invention. IPR proceedings under this standard will therefore be legally unreliable, leading parties to district court proceedings. The broadest reasonable interpretation standard is a pragmatic protocol applied during examination to provide a framework for clarification and amendment, but IPR does not allow the kind of iterative amendment process that justifies this standard.
- Inter Partes Review: The purpose of § 314(d) is to bar interlocutory proceedings and harassing filings. Sensitive scrutiny is required in enlarging this bar, and the majority’s holding in this regard impedes full judicial review of the PTAB’s final decision, further negating the purpose of the AIA.