In re Cuozzo Speed Techs., LLC
In a deeply divided opinion addressing the claim construction standard in post-grant America Invents Act (AIA) proceedings, the U.S. Court of Appeals for the Federal Circuit denied a petition for rehearing en banc, leaving in place a panel decision affirming a Final Written Decision of the U.S. Patent and Trademark Office's (PTO) Patent Trial and Appeal Board (PTAB or Board) finding all challenged claims obvious under the Broadest Reasonable Interpretation (BRI) claim construction standard. In re Cuozzo Speed Techs., LLC, Case No. 14-1301 (Fed. Cir., July 8, 2015) (per curiam) (Dyk, J., concurring) (Prost, C.J., dissenting) (Newman, J., dissenting).
Garmin International petitioned the PTAB for inter partes review (IPR) of Cuozzo Speed Technology's patent. The PTAB instituted the proceeding and found all challenged claims obvious in a Final Written Decision. Cuozzo appealed, challenging the PTO's use of the BRI claim construction standard in IPR proceedings.
A divided Federal Circuit panel affirmed the PTAB ( IP Update, Vol. 18, No. 2). The panel found that, as the AIA statute is silent as to the claim construction standard, there was no indication that the AIA was designed to change the claim construction standard the PTO applies in almost all of its proceedings. The panel also found setting the claim construction standard to be within the purview of the rulemaking authority vested in the PTO by the AIA. Cuozzo petitioned the Federal Circuit for en banc review.
Now, in a per curiam decision, the Federal Circuit has denied Cuozzo's petition for rehearing en banc. In a concurrence, Judge Dyk (who authored the panel decision) explained that BRI is a long-standing practice in PTO proceedings and that Congress conveyed rulemaking authority to the PTO in light of this long-standing practice. Without an indication of express congressional intent, Dyk argued that the Federal Circuit should not adopt a different claim construction standard.
In dissent, Chief Judge Prost first noted that IPR proceedings were intended by Congress to be a substitute for more expensive district court proceedings, which are subject to narrower claim construction standards. Furthermore, as IPR proceedings are novel, Prost argued that it was not legislated within any existing PTO post grant regime. As such, she argued that congressional intent cannot be inferred from silence. Further in Prost's view, it makes little sense to adhere to the BRI standard in an IPR, where the goal is to provide an efficient vehicle for examining the validity of an issued patent.
Broadest Reasonable Interpretation Persists As Standard For Claim Construction In AIA Proceedings
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