July 9, 2015
by Kevin O'Shea, Partner
Federal Circuit Calls On Congress To Decide Applicability Of Broadest Reasonable Interpretation Standard in IPRs
In a close vote, the Federal Circuit today denied en banc rehearing of its In re Cuozzo Speed Techs., LLC decision, leaving to Congress the question of whether the PTAB should continue to apply in Inter Partes Reviews the Broadest Reasonable Interpretation standard for construing claim language. The Court also issued today a revised panel opinion in the underlying In re Cuozzo Speed Techs., LLC decision, in which Judge Newman significantly expands upon her dissent and the majority further addresses some of Judge Newman's points.
In In re Cuozzo the panel majority had ruled (over Judge Newman's dissent) that: (i) the PTAB's decision to institute an IPR is non-reviewable even after a final decision; (ii) the PTAB is correct to apply the Broadest Reasonable Interpretation standard in IPRs; and (iii) the Supreme Court’s decision in Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015), applies in an appeal from a final decision in an IPR.
Judge Dyk, joined by Judges Lourie, Chen and Hughes, filed a concurring opinion in which he argued that the PTO acted within the rulemaking authority granted to it by Congress in the America Invents Act when the PTO implemented the Broadest Reasonable Interpretation standard for claim construction in IPRs. Therefore, according to the concurring Judges, it is up to Congress to change the standard, and Judge Dyk notes that this issue is addressed in the patent reform bills presently pending in Congress.
Chief Judge Prost, joined by Judges Newman (who was a member of the panel in the underlying appeal), Moore, O'Malley, and Reyna, filed a dissenting opinion. Chief Judge Prost argues that the Broadest Reasonable Interpretation standard is limited to proceedings in which a patentee can amend his claims, and that the narrow opportunity for amending claims in an IPR (both statutorily and in reality) undermine the purpose of the Broadest Reasonable Interpretation standard. Chief Judge Prost and his colleagues go on to argue, relying on the Supreme Court's recent Michigan v. EPA decision, that the PTO's regulation implementing the Broadest Reasonable Interpretation standard is not reasonable.
Finally, Judge Newman filed her own dissent, addressing issues raised by the numerous amicus curiae. Against this backdrop, Judge Newman argues that the Broadest Reasonable Interpretation standard undermines the purpose of IPRs, which is to provide a lower-cost alternative to full-blown litigation.
With this ruling, the Federal Circuit has highlighted the need for Congress to resolve this issue sooner rather than later, in order to provide clarity and predictability for all stakeholders.