Digest of In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Order Denying Pet for En Banc Rhg) (Fed. Cir. July 8, 2015) On appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Per Curium.
Procedural Posture: Appellant Cuozzo Speed Technologies, LLC, filed a petition for rehearing en banc. A response to the petition was filed by the Intervenor, the Director of the USPTO. The petition and response was first referred to the panel that heard the appeal, and then was referred to circuit judges who were in regular active service. A poll was requested, taken, and it failed. The petition for rehearing en banc was denied.
Dyk, Lourie, Chen, and Hughes concurring:
- Inter Partes Review (Applicability of Broadest Reasonable Interpretation): The broadest reasonable interpretation standard is a longstanding practice in USTPO proceedings. Interference proceedings are adjudicatory but they still apply a variant of the broadest reasonable interpretation standard. “Nothing in the AIA supports congressional intent to change the prevailing broadest reasonable interpretation standard.” Further, Congress conveyed rulemaking authority to the USTPO to prescribe regulations regarding inter partes review and the USPTO has “adopted the broadest reasonable interpretation standard for IPR proceedings[.]”.
Prost, Newman, Moore, O’Malley, and Reyna dissenting:
- Inter Partes Review (Applicability of Broadest Reasonable Interpretation): The broadest reasonable interpretation standard cannot be applied during an IPR. Congress was not legislating within an already existing regime when it created IPR as part of the AIA. Congressional silence cannot be interpreted to sanction the broadest reasonable interpretation standard.
- The broadest reasonable interpretation standard “is a useful tool, prior to patent issuance, for clarifying the metes and bounds of an invention during the back-and forth between the applicant and examiner when claims are not yet in their final form.” However, in district court adjudications, amendment is not possible and a district court “assign[s] a fixed, unambiguous legally operative meaning to a claim.” IPRs are meant to provide an alternative to district court adjudications and should thus apply the same interpretation standard as the district court. The “cabined” amendment process available during IPR does not support the application of the broadest reasonable interpretation standard.
- The USPTO only has authority to “prescribe procedural regulations.” Claim construction, however, is substantive and not procedural. Further, even if the claim construction standard fell within the USPTO’s authority, “deference is still not warranted” and the USPTO’s interpretation is unreasonable because “is contrary to the intent of Congress” to provide IPRs as an alternative to district court litigation.
Newman, dissenting (a revised version of Judge Newman’s February 4, 2015 dissent in the In re Cuozzo case issued along with this dissent):
- Purpose of AIA: As stated by several amici curiae, the purpose of the AIA was to foster, patent-based innovation and was focused on achieving stability and predictability of patent validity determinations. “The ambitious plan of the America Invents Act is thwarted” by the “position that the PTO, on post-issuance review, should not apply the claim construction that is applied by the court[.]”
- Legislative Intent: “The America Invents Act established a new PTO tribunal in order to achieve rapid, efficient, and correct resolution of issues of patent validity that heretofore required trial in the district courts after controversy arose.” Legislative intent “fails if the PTO applies different law than is applied in the courts.”
- Broadest Reasonable Interpretation: Further, Judge Newman tabulates the following reasons why the broadest reasonable interpretation standard is incorrect:
- Claims of issued patents are construed the same way for validity as for infringement; no precedent exists for a broader interpretation in one situation than another.
- The broadest reasonable interpretation standard is an “appropriate examination expedient” when claims are readily amendable whereas “in the AIA proceedings amendment requires permission and is limited even when permitted.”
- The USPTO construction of claims more broadly than the basis on which they were granted lead to the patentee defending “the validity of claim scope he did not obtain from the PTO during prosecution.”
- The AIA contemplated a streamlined process for determination of validity and “[t]his requires that the same claim construction is applied in the PTO as in the district courts.”
- “The public notice of patent claims requires the correct claim construction, not an arbitrarily broad construction of undefined limits.”
- “Neither the PTO nor any judicial precedent provides guidance as to how broad is “broadest[.]” Predictability and stability of law are replaced “by fuzziness and uncertainty.”
- The AIA designed the USPTO to review patent validity and it was expected that it would “apply the correct law of validity.”