Today in In re Cuozzo Speed Technologies, LLC, No. 14-1301, a majority (Judges Dyk and Clevenger) affirmed the Patent Trial and Appeal Board's (PTAB) decision to deem certain claims of a speed limit indicator patent unpatentable on obviousness grounds. This is the first of a new wave of appeals, resulting from inter partes review (IPR) decisions under the Leahy-Smith America Invents Act (AIA). In reaching its decision, the majority first affirmed the AIA's requirement that any decision to institute an IPR by the PTAB is final and non-appealable, even after the PTAB issues a final decision. Previously, the court ruled in St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) that no interlocutory appeal could be taken in relation to any decision to institute an IPR by the PTAB. In response to Cuozzo's argument that the PTAB did not have authority to institute an IPR using a combination of references that was not precisely applied in the petition to the particular claims on which the PTAB decided to institute (but the references and claims on which IPR was instituted were part of the original petition), the majority found that the statute supports the PTAB's ability to apply references described in the petition to claims asserted in the petition as being unpatentable. This holds true even if there is not an exact match between the grounds on which IPR is instituted and the grounds asserted in the original petition. The majority suggested that, rather than appealing, a mandamus action in district court following a final PTAB decision is available for a patentee "where the PTO has clearly and indisputably exceeded its authority."
Next, the majority affirmed that the "broadest reasonable interpretation" (BRI) standard is the correct standard for the PTAB to apply in IPR proceedings. The majority found no reason that this standard would be correct for re-examination and not correct for IPR proceedings. Furthermore, the majority noted that a patentee has the ability to amend during IPR, even though such ability may be significantly constrained by the PTAB's requirements. By contrast, the dissent (Newman, J.) believed there is a material difference in IPR proceedings, which are adjudicatory, and also that the ability to amend is largely "illusory" in IPR, such that the proceedings more resemble district court litigation (where patentees may not amend). On this basis, the dissent disagreed that BRI is the correct claim construction standard for IPR proceedings. The majority agreed with the PTAB's decision that the claims in question were obvious over the prior art based on the claim construction it reached using BRI.
Lastly, the majority upheld the PTAB's decision to deny the patentee's motion to amend on the grounds that the substitute claims would have enlarged the scope of the patent. The majority found no error in the PTAB's claim construction of a key limitation found in the substitute claims. The majority further agreed that, under this construction, at least one embodiment would infringe the substitute claims that would not have infringed the original claims.
In light of this decision, patentees who believe the PTAB erred in instituting an IPR may consider filing a mandamus action. Patentees should also consider keeping continuations pending in order to permit easier amendments if parent patents are challenged in an IPR. In addition, patentees should think carefully about dependent claims during original prosecution to provide fall-back positions that may avoid the need to amend during an IPR.
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