Thursday, 21 January 2016

Supreme Court Agrees To Decide Proper Claim Construction Standard in IPR Proceedings

On January 15, 2016, the U.S. Supreme Court granted certiorari in a case involving the appropriate claim construction standard for patent claims challenged in an inter partes review proceeding before USPTO’s Patent Trial and Appeal Board (PTAB). Cuozzo Speed Technologies, LLC v. Lee, Case No. 15-446 (cert. granted Jan. 15, 2016).

Cuozzo Speed Technologies, LLC owns U.S. Patent No. 6,778,074, which claims, among other things, a speed display connected to a global positioning system device that displays a vehicle’s current speed and indicates when the speed exceeds the legal speed limit for the vehicle’s exact location. Garmin International, Inc. filed a petition for inter partes review (IPR) of certain claims of the ‘074 patent on September 16, 2012 – the first day that IPR proceedings were available under the Leahy-Smith America Invents Act. The PTAB construed the claims by giving each claim the “broadest reasonable construction in light of the specification of the patent in which it appears,” also known as the “BRI” standard, applying the USPTO rules for AIA proceedings. 37 C.F.R. § 42.100(b). In its final decision, PTAB ruled that three challenged claims were invalid as obvious.

Cuozzo appealed the result to the Federal Circuit. In a Feburary 4, 2015 divided decision, the court held that the BRI standard was appropriate. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015). The panel also held that the USPTO’s decision to institute an IPR proceeding was not appealable, either prior to or after the PTAB’s final decision. See 35 U.S.C. § 314(d) ([t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”). Cuozzo then filed a request for rehearing en banc.

In another split decision, the Federal Circuit declined en banc review by a thin margin. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1297 (Fed. Cir. 2015) (per curiam).Circuit Judge Timothy B. Dyk wrote an opinion concurring in the denial. Chief Judge Sharon Prost, joined by four other judges, wrote an opinion dissenting from the denial.

The principal point of disagreement on the court, and an issue to be considered by the Supreme Court on appeal, is the standard the PTAB should use to construe claims during AIA proceedings. The USPTO implemented the AIA’s post-grant provisions by promulgating rules requiring claims to be interpreted using the BRI standard. In federal court proceedings, on the other hand, claims are construed to have their “actual” meaning to a person skilled in the art based on the claim language, specification, prosecution history, and – occasionally – other extrinsic evidence.

In his concurring opinion, Circuit Judge Dyk argued that BRI was supported by the AIA’s legislative history, because Congress had been aware of the USPTO’s use of that standard for decades and the AIA legislative history is silent about requiring a different standard.

In her dissent, however, Chief Judge Prost argued that the AIA post-grant trial mechanism was a “new, court-like proceeding[,]” and thus it should use the same construction standard used in traditional litigation matters. She noted that the Federal Circuit has embraced the BRI standard only as a useful tool prior to patent issuance or during reexaminations or reissues, where the patentee has the ability to amend claims. Under the PTAB rules for IPRs, on the other hand, amendments are very limited.

The specific questions presented in the Supreme Court are:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Briefing will continue until late spring, with oral argument most likely in May.

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