In re Cuozzo Speed Tech., LLC presented the Federal Circuit with its first opportunity to address important, open questions about how the Patent Trial and Appeal Board (PTAB) handles its relatively new Inter Partes Review (IPR) proceedings. In February 2015, a panel of the Federal Circuit held, in a split decision, that (i) decisions by the PTAB to institute an IPR are unreviewable on appeal and (ii) the PTAB should use the “broadest reasonable interpretation” (BRI) claim construction standard when reviewing the validity of the challenged patent in an IPR proceeding. The Federal Circuit subsequently denied Cuozzo’s en banc rehearing petition by a 6-5 vote. The dissenting judges urging rehearing would have rejected the PTAB’s use of the BRI claim construction standard.
Cuozzo has now asked the Supreme Court to weigh in on both of these issues, which influence many IPR proceedings. Granting Cuozzo’s certiorari petition would give the Supreme Court its first opportunity to shape the trial process in these new, popular, and transformational Patent Office litigation proceedings.
IPR Proceedings
The America Invents Act (AIA) of 2011 created several new adversarial Patent Office litigation proceedings for challenging a patent’s validity: Inter Partes Review (IPR), Covered Business Method Patent Review (CBM), and Post-Grant Review (PGR). The proceedings have proven to be extremely popular and transformational in their impact. IPRs have been particularly popular given their greater availability compared with CBM and PGR. Indeed, the Patent Office reports that 3,605 IPR petitions were filed between September 16, 2012 (the first available date) and October 8, 2015.
Under the new IPR system, a petitioner (other than the patent owner) files a petition to institute a review by the PTAB of one or more claims of the challenged patent. 35 U.S.C. § 311(a). Validity challenges in IPRs can only be made under 35 U.S.C. § 102 (novelty) and/or § 103 (obviousness) and must be based on printed publications. § 311(b). The patent owner has three months to file an optional preliminary response. § 313. Within three months of the patent owner’s preliminary response, the PTAB makes its decision whether to institute the IPR trial. § 314(b). If the PTAB institutes an IPR, the trial proceeds through discovery, competing written responses, typically an oral hearing, and ultimately a final written decision by the PTAB on the validity of the claims for which the IPR was instituted. § 318.
Importantly, the AIA provides that the PTAB’s decision to institute an IPR “shall be final and unappealable.” § 314(d). The AIA does not specify the claim construction standard the PTAB must use in an IPR, and the PTAB adopted the BRI claim construction standard for unexpired patent claims. See 37 C.F.R. § 42.100(b).
The IPR of Cuozzo’s Patent
Cuozzo sued Garmin International for infringement of U.S. Patent No. 6,778,074 (“the ’074 Patent”) on June 15, 2012, in the United States District Court for the District of New Jersey. In response, Garmin filed an IPR petition for the ’074 Patent on September 16, 2012, the first possible filing date for IPR petitions. The PTAB instituted the IPR on January 9, 2013, although it did not do so on the exact grounds Garmin requested.
The ’074 Patent is directed to a speed limit indicator for a motor vehicle that displays both the current speed of the vehicle and the applicable speed limit, which is determined with the aid of a GPS system. The applicable speed limit is shown in a “colored display,” and the speedometer is “integrally attached” to the colored display. The validity of the challenged claims turned on the meaning of the claim term “integrally attached.” In its final written decision, the PTAB construed this term using the BRI standard to mean “discrete parts physically joined together as a unit without each part losing its own separate identity.” This construction was broader than Cuozzo’s proposed construction, which was “joined or combined to work as a complete unit.” In rejecting Cuozzo’s proposed construction, the PTAB remarked that “Cuozzo’s arguments are directed to an ‘integral display’ rather than a speedometer that it ‘integrally attached’ to a colored display,” as actually recited in the claim. The PTAB determined that the challenged claims were invalid under its adopted construction.
The Federal Circuit Appeal
Cuozzo appealed the PTAB’s final written decision to the Federal Circuit. The appeal presented two main issues: (1) whether the AIA’s prohibition on appeals of IPR institution decisions prohibits interlocutory appeals while permitting appeals of the institution decision following the PTAB’s final written decision; and (2) the appropriate claim construction standard for IPRs. Cuozzo argued that the institution was improper because the PTAB did not adopt the exact grounds presented in Garmin’s IPR petition, in contravention of the AIA’s requirement that the petition...
