Federal Circuit Decision Affirming the Board – In re Cuozzo Speed Technologies, LLC

IPR2012-00001

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Takeaway: Decisions by the Board to institute inter partes review are not appealable, and once an inter partes review proceeding has been instituted, the appropriate claim construction standard to be used for an unexpired patent is the broadest reasonable interpretation standard.

In its Decision, the U.S. Court of Appeals for the Federal Circuit held that decisions to institute inter partes review by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board are not appealable.  The Federal Circuit also held that the “broadest reasonable interpretation” standard used by the Board in its claim construction analysis was correct.  Finally, the Federal Circuit affirmed the Board’s finding that the challenged claims of the ’074 patent related to a navigation system are invalid.

The ’074 patent was assigned to Cuozzo Speed Technologies, LLC (“Cuozzo”). The ’074 patent relates to a vehicle navigation system “interface which displays a vehicle’s current speed as well as the speed limit.”  Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) had petitioned the USPTO for inter partes review of claims 10, 14, and 17 of the ’074 patent, and the USPTO had granted Garmin’s Petition.  The Board ultimately issued a Final Written Decision finding that claims 10, 14, and 17 are invalid for having been obvious in view of the prior art.  The Board’s Final Written Decision also denied a Motion to Amend that Cuozzo had filed seeking the replacement of claims 10, 14, and 17 with new claims 21, 22, and 23, respectively.

The Federal Circuit began its analysis in appeal by noting that inter partes review proceedings have two phases: a first phase in which the Board determines whether to institute inter partes review, and a second phase in which “the Board conducts the [inter partes review] proceeding and issues a final decision.”  Cuozzo argued that in the first phase of this case, the Board had erred in instituting inter partes review.  The Federal Circuit disagreed, holding that 35 U.S.C. § 314(d) prohibits the review of a Board decision to institute inter partes review, “even after a final decision.”

Cuozzo also challenged the Board’s obviousness conclusions, arguing to the Federal Circuit “that the Board should not have applied the broadest reasonable interpretation standard in claim construction.” The Federal Circuit disagreed.  While acknowledging that the law which created inter partes review proceedings, namely, the America Invents Act (“AIA”), was silent on the issue of whether the broadest reasonable interpretation was the appropriate claim construction standard to be used in such proceedings, the Federal Circuit nevertheless concluded that “Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA,” because Congress was silent on the issue when it was well aware that the broadest reasonable interpretation standard was the prevailing rule for any proceeding or examination before the USPTO.  The Federal Circuit then went on to confirm that it did not see any error in the Board’s claim construction in the present case on appeal.

The Federal Circuit concluded by affirming the Board’s finding that claims 10, 14, and 17 of the ’074 patent are invalid because they would have been obvious in view of the prior art. It also found that the Board had not erred in denying Cuozzo’s Motion to Amend because, for example, the proposed amendment would have improperly broadened the claims, which is barred by the statute and PTO regulations.

The dissenting opinion argued that the Board should be using the same standards for claim construction that district courts apply, and that the decision to institute should be reviewable on appeal of a final written decision.

In re Cuozzo Speed Technologies, LLC, Appeal from the USPTO’s Board Decision in IPR2012-00001
Decision from the U.S. Court of Appeals for the Federal Circuit
Dated: February 4, 2015

Patent: 6,778,074

Before: Circuit Judges Newman, Clevenger, and Dyk

Opinion for the court filed by: Circuit Judge Dyk
Dissenting Opinion filed by: Circuit Judge Newman