Docket No. 2014-1301
NEWMAN(D), CLEVENGER, DYK
February 4, 2015
Brief Summary: Decision determined final decision to institute IPR review is not appealable, “broadest reasonable interpretation” is proper during IPR review, and the Board correctly construed the claims and found the same obvious.
Summary: The PTO granted Garmin’s petition for inter partes review (IPR) of Cuozzo’s US 6778074 relating to speed limit indicator “integrally attached” to a speedometer. The PTAB issued a final decision finding claims 10, 14 and 17 obvious and denied Cuozzo’s request to substitute certain claims. Cuozzo appealed. One grounds of appeal was that IPR was improperly instituted because Garmin did not identify the prior art the PTO relied on as grounds for IPR of claims 10 and 14 in its petition. This ground was rejected, the FC panel concluding “that § 314(d) prohibits review of the decision to institute IPR even after a final decision” (“Section § 314(d) provides that the decision is both ‘nonappealable’ and ‘final’, i.e., not subject to further review…It is not clear that IPR is strictly limited to the grounds asserted in the petition.”). The opinion also explained that the “‘broadest reasonable interpretation standard’…that the PTO has applied for more than 100 years” is applicable to IPR proceedings (e.g., “Congress in enacting the AIA was well aware that the broadest reasonable interpretation standard was the prevailing rule.”) The next question was whether the Board properly construed the claims under that standard. The Board construed “integrally attached’ as meaning ‘discrete parts physically joined together as a unit without each part losing its separate identity.’” Cuozzo argued this construction “improperly excludes a single-LCD embodiment of the invention wherein the speedometer and the speed limit indicator are on the same LCD.” The FC opinion noted that the phrase “was not included in the either the specification or the claims as originally filed” but “was introduced by an amendment to claim 10 to to overcome a rejection”. It therefore found no error with the Board’s interpretation as “[t]he word ‘attached’ must be given some meaning…[and] it would be illogical to regard one unit as being ‘attached’ to itself.” The next question was whether the Board correctly concluded the claims were obvious. The FC panel concluded the Board was correct in part because “[a]pplying modern electronics to older mechanical devices has been commonplace in recent years” (Leapfrog, FC 2007). Regarding Cuozzo’s denied request to substitute claims, the FC opinion explained that the IPR statute “and PTO regulation bar amendments which would broaden the scope of the claims” (as with reissues and reexaminations, “a claim ‘is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent” (Tillotson, FC 1987; In re Freeman, FC 1994)). The FC agreed with the Board that that “claim 21 was broadening because it would encompass a single-LCD embodiment…which was not within the original claims.” Judge Newman’s dissent argued that the “broadest reasonable interpretation” was improperly approved for use in IPR and that final decision of IPR review should be appealable.