The Federal Circuit last week issued its first ruling, In re Cuozzo Speed Technologies, on an appeal from an inter partes review (IPR) final written decision. In doing so, the court affirmed the USPTO's Patent Trial and Appeal Board (PTAB) on two critical issues, offering further clarity for Patent Office litigants.
First, the court held that it lacks jurisdiction to review PTAB decisions to institute IPR, even after the PTAB has issued a final written decision. Previously, the court had held in St. Jude Medical v. Volcano Corp. that it could not entertain appeals of decisions not to institute review. Now, In re Cuozzo puts a final nail in the coffin for those who would appeal from an allegedly wrongful decision whether to institute IPR, finding that the AIA bars both interlocutory review of an institution decision, as well as review of that decision even after a final decision. The In re Cuozzo ruling did leave unresolved the question of whether a decision to institute IPR may be reviewable by mandamus after the PTAB issues a final decision, though it noted its prior decision that mandamus is unavailable for decisions not to institute IPR. Even if mandamus is ultimately determined to be a viable option after a final written decision, though, a mandamus petition may still prove to be a fool's errand given the lofty standard for such writs to issue. Indeed, the court reaffirmed that only "rare situations" ever justified mandamus. In short, In re Cuozzo further insulates IPR-institution decisions from judicial review.
Second, the court affirmed the PTAB's use of the "broadest reasonable interpretation" standard in construing claims in IPRs. The court cited the Patent Office's long history of applying this standard in its proceedings and found that "[t]here is no indication that the [America Invents Act] was designed to change the claim construction standard that the PTO has applied for more than 100 years." The court also noted that patent owners are permitted to amend claims in an IPR proceeding, and thus its decision was consistent with longstanding judicial precedent affirming the "broadest reasonable interpretation" standard in proceedings where claim amendment is permitted. In dissent, Judge Newman agreed with appellants that the PTAB should adopt the standard used in district courts: that claims should be construed as understood by the person of ordinary skill in the art, as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). That view, however, has now been firmly squelched, unless and until the Supreme Court—or en banc Federal Circuit—weighs in on the issue.
Keywords: litigation, intellectual property, inter partes, patent, PTAB, Cuozzo