Split Federal Circuit Confirms Broadest Reasonable Interpretation Claim Construction Standard in IPR Proceedings | Practical Law

Split Federal Circuit Confirms Broadest Reasonable Interpretation Claim Construction Standard in IPR Proceedings | Practical Law

In In re Cuozzo Speed Technologies, LLC, a split panel of the US Court of Appeals for the Federal Circuit denied Cuozzo's petition for rehearing en banc, confirming the Patent Trial and Appeal Board's (PTAB) use of the broadest reasonable interpretation claim construction standard in inter partes review proceedings.

Split Federal Circuit Confirms Broadest Reasonable Interpretation Claim Construction Standard in IPR Proceedings

by Practical Law Intellectual Property & Technology
Published on 10 Jul 2015 • USA (National/Federal)
In In re Cuozzo Speed Technologies, LLC, a split panel of the US Court of Appeals for the Federal Circuit denied Cuozzo's petition for rehearing en banc, confirming the Patent Trial and Appeal Board's (PTAB) use of the broadest reasonable interpretation claim construction standard in inter partes review proceedings.
On July 8, 2015, a split panel of the US Court of Appeals for the Federal Circuit, in In re Cuozzo Speed Technologies, LLC, denied Cuozzo's petition for rehearing en banc of its February 4, 2015 decision affirming the Patent Trial and Appeal Board's (PTAB) cancellation of Cuozzo Speed Technologies, LLC's patent claims in the first inter partes review (IPR) proceeding (No. 2014-1301, (Fed. Cir. Jul. 8, 2015)). In so doing, the court confirmed that the broadest reasonable interpretation (BRI) standard was the proper claim construction standard for IPR proceedings. On that same day, the Federal Circuit issued a revised opinion of its previous February 4, 2015 decision with slightly altered language and in which Judge Newman elaborated on her dissent (No. 2014-1301, (Fed. Cir. Jul. 8, 2015)). For more information on the previous decision, see Legal Update, Federal Circuit Upholds First AIA Inter Partes Review.
Judges Dyk, Lourie, Chen and Hughes issued an opinion concurring in the denial of the petition. There were two dissenting opinions issued by:
  • Chief Judge Prost with Judges Newman, Moore, O'Malley and Reyna.
  • Judge Newman.
Judge Dyk with Judges Lourie, Chen and Hughes issued a concurring opinion, stating that the BRI standard, not the Phillips claim construction standard applied in district court litigation, is proper for IPR proceedings, reasoning that:
  • There is no reason to deviate from the USPTO's longstanding practice of applying the BRI standard in USPTO proceedings. The USPTO has applied the BRI standard in interference proceedings, which are adjudicatory like IPR proceedings.
  • Nothing in the America Invents Act (AIA) indicates congressional intent to apply a different standard. If Congress intended a different standard, then they would have included it in the AIA.
The first dissent, authored by Chief Judge Prost with Judges Newman, Moore, O'Malley and Reyna, argued that IPR is a new, court-like, adjudicatory proceeding where claims should be given their actual meaning, not their BRI. The first dissent argued against the BRI standard, noting that:
  • Congressional silence on the standard has no meaning in this context. Through the AIA and in creating IPRs, Congress intended to streamline the patent system to more efficiently adjudicate patent validity with the finality of district court adjudications of patent validity. This does not explain why Congress would want the PTAB to construe IPR claims differently.
  • Existing case law and the similarities between IPR proceedings district court litigation do not support the BRI standard. The Federal Circuit has continuously explained that the BRI standard is useful before patent issuance. But since applicants cannot correct errors in claim language or adjust the scope of claim protection in district court litigation, the Federal Circuit has not used the BRI standard (Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed. Cir. 2005) and Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998)). Additionally, IPRs should be treated more like district court adjudications rather than USPTO proceedings because during IPRs, claim amendment is very limited.
  • 35 U.S.C. 316 is consistent with Congress's previous grants of authority to prescribe procedural regulations, which does not apply to the substantive issue of which claim construction standard to apply.
Lastly, Judge Newman's dissent included additional policy arguments that applying the BRI standard impedes the public interest in technological advance and the national interests of a vigorous economy.