9 February 2015
The United States Court of Appeals for the Federal Circuit has affirmed the decision of the Patent Trial and Appeal Board (Board) of the US Patent & Trademark Office (USPTO) cancelling three claims of US Patent No. 6,778,074 (the “074 patent”), owned by Cuozzo Speed Technologies, LLC.1 The Federal Circuit held, in affirming the Board’s decision that three claims of the 074 patentable were unpatentable as obvious over prior art and that the court lacked jurisdiction to review the Board’s decision to institute the inter partes review (IPR). The Federal Circuit also held that the Board’s claim construction standard—the “broadest reasonable interpretation” standard used in examination—was proper.
In In re Cuozzo Speed Technologies, the patent owner appealed the cancellation of claims 10, 14 and 17 of the 074 patent in the Board’s final written IPR decision. The patent owner argued, in part, that the Board improperly instituted the IPR trial to decide whether claims 10 and 14 were obvious over combinations of prior art that included two patents not cited against those claims in the IPR petition. The petition, filed by Garmin International, Inc., and Garmin USA, Inc.,2 cited those two patents as prior art against dependent claim 17, but not against claims 10 and 14.
The Federal Circuit held that it had no jurisdiction to hear an appeal from the Board’s decision to institute because 35 U.S.C. § 314(d), which states that a decision “whether to institute an inter partes review … shall be final and nonappealable,” prohibits review of the decision to institute even after a final decision. According to the Federal Circuit, because “[t]here was no bar” to a finding of obviousness based on the two references at issue, “[t]he failure to cite those references in the petition provides no grounds for setting aside the final decision.”
Even though the decision to institute may not be appealed, the Federal Circuit left open the possibility that mandamus relief might be available for a decision to institute outside the USPTO’s authority, in appropriate circumstances. The court stated that, if it were to treat the patent owner’s appeal as a petition for mandamus, the appeal would still fail because the right to mandamus relief was not clear and indisputable. In this case, claim 17 depended from claim 14, which depended from claim 10. The USPTO argued that the combination of references cited against claim 17 in the petition was implicitly cited against claims 14 and 10, as well, because those claims were necessarily broader because of the dependency. This satisfied the majority of the panel that mandamus was unavailable in this case, but the court “[did] not decide whether mandamus to review institution of [inter partes review] after a final decision is available in other circumstances.”
The Federal Circuit also rejected the patent owner’s argument that the Board should not have applied the “broadest reasonable interpretation” standard for claim construction. Pursuant to 35 U.S.C. § 316, the USPTO issued a rule stating that claims in unexpired patents should be given their broadest reasonable interpretation during inter partes review.3 The parties disputed whether the USPTO had authority to promulgate that regulation.
The majority panel agreed that the USPTO had that authority, but it went further and held that Congress had impliedly adopted the “broadest reasonable interpretation” standard when enacting the AIA.
The court also affirmed the Board’s decision denying the patent owner’s motion to amend, which would have substituted a new claim for independent claim 10. The Federal Circuit agreed with the Board that the amendments were broadening because they encompassed embodiments not encompassed within original claim 10. Indeed, the patent owner’s appeal was based on its argument that the Board’s construction of the original claim improperly excluded the embodiments that would be encompassed by the amended claim, but the court agreed with the Board’s claim construction.
In a dissenting opinion, Judge Newman wrote that Congress intended IPRs to function as an alternative to district court litigation. To serve that function, IPRs must be decided on the same facts and law as district court litigation, meaning the same claim construction standard should be applied. The adjudicative nature, as opposed to reexamination, further supported this conclusion, as Judge Newman wrote. The dissent also disagreed with the court’s absolute refusal to review the Board’s decision to institute where, as in this case, the Board cancelled claims based on arguments and evidence not raised in the IPR petition.
1 In re Cuozzo Speed Technologies, LLC, Case No. 2014-1301 (Fed. Cir. Feb. 4, 2015).
2 The Garmin petitioners were dismissed from the appeal following settlement between the parties.
3 37 C.F.R. § 42.100(b).