Inside a 2-1 decision in In re Cuozzo Speed Technologies LLC, No. 14-1301 (Given. Cir. February. 4, 2015), the government Circuit lately held the Patent Office may use the “broadest reasonable interpretation” standard to construe the claims of issued patents within the new AIA publish-grant proceedings, as opposed to the “ordinary and customary meaning” approach utilized in the government district courts. A legal court also held the Patent Office’s decision to institute review underneath the AIA isn’t appealable.
The panel majority reasoned that because Congress was conscious of the “broadest reasonable interpretation” standard the Patent Office uses in initial study of patent applications along with other proceedings and didn’t specifically offer another standard, Congress “impliedly adopted” the largest reasonable interpretation standard already utilized by the Patent Office.
Most also figured that the AIA granted the Patent Office new rule-making authority to control IPRs, which Chevron deference should affect the Office’s adoption from the largest reasonable interpretation standard by regulation. Most also held that parties cannot challenge the Patent Office’s decision to institute inter partes overview of an issued patent included in an appeal in the Patent Office’s ultimate decision around the merits. A legal court reasoned that Section 314(d) from the AIA, which supplies that “[t]he determination through the Director whether or not to institute an inter partes review under this will be final and nonappealable,” precludes such review.
Judge Newman filed a energetic dissent, quarrelling the panel majority’s rulings around the “broadest reasonable interpretation” standard and the authority to appeal the Patent Office’s decision to institute are “contrary towards the legislative purpose” from the AIA. Judge Newman recognized that Congress intended to supply a quick, and price-effective option to district court litigation around the issue of patent validity. She distinguished the “broadest reasonable interpretation” standard like a “pragmatic protocol” put on patent examination in the rule of law established in Phillips v. AWH Corp that ultimately determines the metes and bounds from the claimed invention that an inventor is titled.
Judge Newman cautioned the majority’s decision produces a “built-in discrepancy” that defeats the legislative reason for supplying an administrative surrogate for district court litigation and renders the Patent Office rulings “legally hard to rely on.” She also noted that almost all erred in counting on a patent owner’s capability to amend its claims inside a publish-grant proceeding to warrant utilisation of the largest reasonable interpretation standard, mentioning that the opportunity to amend claims in IPRs is “almost entirely illusory.”
Judge Newman also issued an alert: when the Patent Office doesn’t use the same law to the making of a patent claim because the district court would, then IPRs “will just become another mechanism for delay, harassment, and expenditure,” resistant to the expressed intent of Congress.
Judge Newman’s dissent signals this panel majority decision rarely is in the final word around the claim construction standard utilized in the AIA proceedings. Additionally to the potential of panel rehearing or en banc overview of this situation, Judge Newman is part of the panel within the pending SAP v. Versata situation, together with Idol judges Plager and Hughes, that was contended on December 3 and incorporated significant amicus briefing around the largest reasonable interpretation standard. (Disclosure: the authors filed an amicus brief with respect to 13 large companies quarrelling from the Patent Office’s utilisation of the “broadest reasonable interpretation” standard in publish-grant proceedings.)
Whether or not the courts still defer towards the Patent Office, Congress may part of to deal with the claim construction standard for publish-grant proceedings. On Feb 5, 2015, House Judiciary Committee Chairman Bob Goodlatte introduced the Innovation Act of 2015, including among its technical corrections towards the AIA the necessity the Patent Office use the same claim construction standard because the district courts. The balance would also require Patent Office to think about to the prior district court’s construction from the claims at issue.
The Two-1 decision in Cuozzo illustrates the ongoing debate over the way the Patent Office should conduct publish-grant proceedings and just how individuals proceedings vary from district court litigation, a debate rapidly warming up in the government Circuit and also the Congress.