In In re. Cuozzo Speed Technologies, LLC, the Court of Appeals for the Federal Circuit addressed for the first time the standards for Inter Partes Review proceedings resulting from the Leahy Smith America Invents Act (“AIA”).1 This decision will not only have a significant impact on Inter Partes Review proceedings brought before the Patent Trial and Appeal Board (“PTAB”), but also on strategic considerations for parties involved in active patent disputes and litigation.
The AIA replaced the prior Inter Partes Reexamination proceedings with the current Inter Partes Review proceedings. While many provisions of both proceedings are similar, other provisions differ.
Inter Partes Reexamination proceedings became available in 1999.2 Such proceedings provided potential benefits to challengers, such as a less expensive route than District Court litigation for challenging the validity of one or more claims of an asserted patent. The extent, and resultant cost, of the inter partes reexamination, was limited to patentability issues based on patents or other published prior art.3 In these proceedings, the challenged claims were construed under the “broadest reasonable interpretation” standard, rather than their “ordinary and customary meaning” standard used in District Court litigation, in which prosecution history estoppel and other factors could be used to assert a narrower scope of the claims.4 The broader claim scope is perceived to allow prior art to be more easily read on the claims, thus reducing the burden of invalidating those claims.5
Inter Partes Reexamination also imposed other constraints, which potentially limited the benefit of the proceedings to a challenger. Prior art was primarily limited to patents and printed publications, and the challenger was not allowed to take discovery during the proceedings regarding the invalidity contentions.6 Further, the challenger was estopped from raising invalidity contentions in later litigation, if those contentions were unsuccessfully raised, or could have been raised, in the inter partes reexamination proceeding.7
In an effort to increase the use of inter partes reexamination proceedings, the AIA replaced the Inter Partes Reexamination proceedings with Inter Partes Review proceeding. Inter Partes Review proceedings, significantly, provide for limited discovery8 during the proceedings, to increase the utility of the proceedings for “providing quick and cost effective alternatives to litigation.”9 The AIA did not, however, specifically address the standard under which claims should be construed for invalidity purposes.10
In In re. Cuozzo, the PTAB applied the broadest reasonable interpretation standard, and found the challenged claims to be invalid under §103 as obvious.11 Cuozzo challenged this standard at the Federal Circuit. In a split decision, with Justices Dyk and Clevenger concurring, and Justice Newman dissenting, the Federal Circuit held that broadest reasonable interpretation standard was properly applied.12
As a result, challengers of a patent can at present rely on the broadest reasonable interpretation standard as a basis for challenging claims in an Inter Partes Review proceeding, thus availing themselves of an easier burden in invalidating challenged claims. Absent this standard, the strategic merit of Inter Partes Review proceedings would have been limited.
While this decision preserves a major benefit of challenging claims through an Inter Partes Review proceeding, other factors will affect the strategic decision of whether to challenge claims in a District Court proceeding, or through an Inter Partes Review proceeding. A lawyer knowledgeable in such matters should be consulted before any decision is made.
- In re: Cuozzo Speed Technologies LLC, Case No. 14-1301, U.S. Court of Appeals for the Federal Circuit.
- 35 U.S.C. § 311 was created by the American Inventors Protection Act of 1999, Public Law 106-113, Nov. 29, 1999.
- Pre-AIA 35 U.S.C. § 301 limited the material that could be submitted to “prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent” and “statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.”
- Imposition of the “broadest reasonable interpretation” standard was not statutory, but rather established through precedent. The Cuozzo decision discusses this history at page 12 of the slip opinion. Construction of the scope of claims in District Court litigation is based on the standards established in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005), an en banc decision of the Federal Circuit, which provided that “[b]ecause the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Innova, 381 F.3d at 1116. Those sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.; see also Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364 (Fed.Cir.2004); Vitronics, 90 F.3d at 1582-83; Markman, 52 F.3d at 979-80.” Phillips, 415 F.3d at 1314.
- For example, Cuozzo argued that had the PTAB not imposed the broadest reasonable interpretation standard, the claims at issue would not have been found invalid.
- Pre-AIA 35 U.S.C. § 301. Pre-AIA 35 U.S.C. § 305 provided bounds for limiting the involvement of the challenger, bounds which did not include the taking of discovery.
- Pre-AIA 35 U.S.C. § 315(b).
- Post-AIA 35 U.S.C. § 316(c).
- H.Rep. No. 112-29, pt. 1 at 48 (2011)
- Cuozzo, Slip opinion at page 12.
- Cuozzo, slip opinion at page 4.
- Cuozzo, slip opinion, at page 19.