In a close vote, the Federal Circuit today denied en banc
rehearing of its In re Cuozzo Speed Techs., LLC decision, leaving
to Congress the question of whether the PTAB should continue to
apply in Inter Partes Reviews the Broadest Reasonable
Interpretation standard for construing claim language. The
Court also issued today a revised panel opinion in the underlying
In re Cuozzo Speed Techs., LLC decision, in which Judge Newman
significantly expands upon her dissent and the majority further
addresses some of Judge Newman's points.
In In re Cuozzo the panel majority had ruled (over Judge
Newman's dissent) that: (i) the PTAB's decision to
institute an IPR is non-reviewable even after a final decision;
(ii) the PTAB is correct to apply the Broadest Reasonable
Interpretation standard in IPRs; and (iii) the Supreme Court's
decision in Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 135 S.Ct.
831, 841 (2015), applies in an appeal from a final decision in an
IPR.
Judge Dyk, joined by Judges Lourie, Chen and Hughes, filed a
concurring opinion in which he argued that the PTO acted within the
rulemaking authority granted to it by Congress in the America
Invents Act when the PTO implemented the Broadest Reasonable
Interpretation standard for claim construction in IPRs.
Therefore, according to the concurring Judges, it is up to Congress
to change the standard, and Judge Dyk notes that this issue is
addressed in the patent reform bills presently pending in
Congress.
Chief Judge Prost, joined by Judges Newman (who was a member of
the panel in the underlying appeal), Moore, O'Malley, and
Reyna, filed a dissenting opinion. Chief Judge Prost argues
that the Broadest Reasonable Interpretation standard is limited to
proceedings in which a patentee can amend his claims, and that the
narrow opportunity for amending claims in an IPR (both statutorily
and in reality) undermine the purpose of the Broadest Reasonable
Interpretation standard. Chief Judge Prost and his colleagues
go on to argue, relying on the Supreme Court's recent Michigan
v. EPA decision, that the PTO's regulation implementing the
Broadest Reasonable Interpretation standard is not
reasonable.
Finally, Judge Newman filed her own dissent, addressing issues
raised by the numerous amicus curiae. Against this backdrop,
Judge Newman argues that the Broadest Reasonable Interpretation
standard undermines the purpose of IPRs, which is to provide a
lower-cost alternative to full-blown litigation.
With this ruling, the Federal Circuit has highlighted the need for
Congress to resolve this issue sooner rather than later, in order
to provide clarity and predictability for all stakeholders.
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