Docket No. 2014-1301
NEWMAN (D), CLEVENGER, DYK
July 8, 2015
Brief Summary: Decision by PTO on whether or not to institute IPR is “final and nonappealable”. Broadest reasonable interpretation of claims is the appropriate standard during IPR.
Summary: Cuozzo appealed PTO’s decision to institute inter partes review (IPR) of its US 6,778,074 relating to a speed limit indicator as requested by Garmin et al. The Board applied a broadest reasonable interpretation to the claims and concluded claims 10, 14 and 17 of the ‘074 patent were unpatentable as obvious. The Board also denied Cuozzo’s motion to amend the claims due to a lack of written description support and the substitute claims would have improperly enlarged the scope of the claims. The opinion explained that IPR proceeds in two phases: 1) the PTO determines whether to institute IPR; and, 2) the Board conducts the IPR proceedings and issues a final decision (St. Jude, FC 2014). Cuozzo argued the PTO improperly instituted IPR on claims 10 and 14 because it relied on prior art Garmin did not identify in its petition as grounds for those claims. 35 USC § 314(d) states that the IPR determination “shall be final and nonappealable”. Cuozzo argued that § 314(d) “merely postpones review of the PTO’s authority until after the issuance of a final decision by the Board.” While the FC panel agreed Garmin’s petition was defective, it nevertheless concluded that § 314(d) “bar[s] review of all institutional decisions, even after the Board issues a final decision” (citing In re Hinkler, FC 1998 (flawed decision to institute reexamination…was not a basis for setting aside a final decision)). The opinion explains that mandamus may be available in certain situations (1) the party seeking it must have no other adequate means of attaining relief; 2) the petitioner must show his right to issuance is clear and undisputable; and, 3) the issuing court must be satisfied it is appropriate (Kerr, US 1976)) but, “[h]ere, Cuozzo has not filed a mandamus petition” and even if it did “the situation here is far from satisfying the clear-and-indisputable requirement for mandamus” (“It is not clear that the IPR is strictly limited to the grounds asserted in the petition.”) Cuozzo also argued the Board should not have applied the BRI standard in claim construction but the FC panel disagreed (“There is no indication that the AIA was designed to change the claim construction standard the PTO has applied for more than 100 years…We conclude that Congress implicitly approved the [BRI] standard in enacting the AIA.”) Furthermore, the opinion explained, even if Congress did not approve BRI, § 316 gives the PTO the authority to adopt the standard in regulation. And it saw no error in the Board’s interpretation of the claims, reviewed under the Teva procedure (Teva, US 2014 (no extrinsic evidence here so the claim construction reviewed de novo). The FC panel also agreed with the Board’s obviousness analysis (“[a]plying modern electronics to older mechanical devices has been commonplace in recent years”, Leapfrog, FC 2007). And it agreed with the PTO that Cuozzo’s proposed amendment would have been broadening and therefore barred. Judge Newman’s dissent argued BRI is not the correct standard and the panel’s “casual disregard” of the defective IPR petition.