Pittsburgh Technical Council

Federal Circuit Affirms Patent Office's "Broadest Reasonable Interpretation" Standard for Inter Partes Reviews

Federal Circuit Affirms Patent Office's "Broadest Reasonable Interpretation" Standard for Inter Partes Reviews

Article Published: February 11, 2015

By Scott A.M. Chambers, Ph.D. and Matthew D. Zapadka 

On February 4, the Federal Circuit approved the use of the "broadest reasonable interpretation" (or "BRI") standard by the Patent Trial and Appeal Board ("PTAB") in inter partesreview proceedings ("IPR").  The decision in In re Cuozzo Speed Technologies, LLC is the first to approve applying the BRI standard to construe claim terms of patents at issue in the IPR process adopted by the 2012 America Invents Act ("AIA"). Congress intended the IPR system to "provid[e] quick and cost effective alternatives to litigation" by providing a new administrative proceeding to decide certain issues of patent validity.

In Cuozzo, the PTAB instituted an IPR filed by Garmin on the grounds that the claimed technology, for GPS speed monitoring, was previously known or would have been obvious at the time of invention. The Federal Circuit not only affirmed the PTAB's determinations regarding the standard of claim construction, but also held that the PTAB's decisions to institute IPRs are virtually nonappealable.

The Patent and Trademark Office ("PTO") uses the BRI standard to construe the claim terms and apply prior art references in both patent prosecution and IPR. The patent statutes do not explicitly define the standard that is to be used, but the Court opined that BRI was consistent with the congressional intent of the AIA. To the extent that that this intent was not clear, the Court determined that the AIA explicitly gave rulemaking authority to the PTO for IPRs under 35 U.S.C. § 316(a)(4). Because of the implied intent and the statute's rulemaking provisions coupled with the PTO's long history of applying BRI, the Court held that it is appropriate to apply this standard to IPRs. The Office has historically applied this standard because patent applicants have the ability to amend their claims. During IPRs, a patent owner has the ability to amend the claims once, even though such attempts are seldom successful. Although a patent owner may not amend the claims as a matter of right, the Court held that the ability to amend means claims should be given their broadest reasonable interpretation during IPRs. 

The Federal Circuit's decision means that the standard for construing claims will be different in IPR proceedings from that used by District Courts in patent litigation, where claims are given their correct construction as understood by a person of ordinary skill in the field of the invention.

The Court additionally held that it lacked authority to review the PTAB's decision to institute an IPR. The AIA added 35 U.S.C. § 314(d) to the patent statute, which states that the PTAB's decision to institute an IPR "shall be final and nonappealable." The Court interpreted this provision to mean that all institution decisions are barred from review even after the PTAB issues a final decision. The court suggested that mandamus may be available to challenge these PTAB decisions, but grants of mandamus are rare and much more nuanced than appellate determinations of law.

Judge Newman dissented from the majority's opinion, as has been frequent with recent Federal Circuit decisions. In her dissent, Judge Newman disagreed with both holdings, writing that "the majority fail[ed] to implement the statutory purpose [of the AIA]."

For more information, contact either author or visit http://www.pbnlaw.com/practices/intellectual-property/

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