The Continuing Saga of the First IPR at the Federal CircuitJuly 9, 2015



The Federal Circuit has simultaneously issued an order and an opinion in In re Cuozzo Speed Technologies, LLC, previously discussed on Filewrapper® as being the first appeal arising from an inter partes review (“IPR‚¬) . The order issued by the Federal Circuit is a denial of the Petition for En Banc Rehearing to consider application of the broadest reasonable interpretation (BRI) standard for claim interpretation during IPR proceedings. In the rationale for the order, the court stated that the dissenting opinions’ arguments for eliminating BRI in IPR proceedings were unpersuasive. The court based its decision on the fact that the PTO has relied on this standard for proceedings for more than a century. Additionally, the court stated as the text of the America Invents Act and its legislative history do not indicate a congressional intent to change this standard, they would not act of their own accord to change the standard based on notion of public policy.

The accompanying opinion affirms the Patent Trial and Appeal Board’s determination and found no error in the claim construction or obviousness determinations. While Cuozzo argued that the PTO improperly instituted the IPR at issue, the court found that 35 U.S.C. § 314(d) prohibits review of the decision to institute IPR even after a final decision has been issued by the Board, or review of this decision at all. Cuozzo also contended that the Board erred in its obviousness analysis and should not have applied the broadest reasonable interpretation standard. However, based on the previously discussed rationale, the court also rejected this argument. The court also reviewed the Board’s claim construction according to the standards laid out in Teva, and found that there was no error in the Board’s interpretation of the word “attached,”as it was illogical for something to be ‚¬Ëœattached’ to itself. Claim 10 was also analyzed for obviousness and the court affirmed the determination that the mechanical embodiment of the invention described in the claim was obvious. The court also found that the Board properly denied Cuozzo’s motion for leave to amend, as the proposed amendment would broaden the claim scope.

These decision confirm the application of BRI in IPR proceedings, and the non-reviewable nature of the decision to institute—at least for the time being.  But unless and until the U.S. Supreme Court takes up these issues, or a change is made to the governing legislation, there appears to at least be some certainty for these aspects of IPR proceedings.  

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