Federal Circuit Affirms First Final Decision Appealed From An Inter Partes Review

In In re Cuozzo Speed Technologies, LLC, No. 14-1301 (Fed. Cir. Feb. 4, 2015), the Federal Circuit affirmed the first final written decision appealed from an inter partes review ("IPR"). In its decision, the Court held that it lacked jurisdiction to review the Board's decision to institute IPR on direct appeal from a final written decision, the appropriate claim construction standard in IPR proceedings is the broadest reasonable interpretation standard, the Board's factual findings are reviewed for substantial evidence, and legal determinations are reviewed de novo.

Appellant Cuozzo Speed Technologies, LLC ("Cuozzo") owns U.S. Patent No. 6,778,074 ("the '074 patent"), which claims a user interface displaying a vehicle's current speed and the legal speed limit. Garmin International, Inc. and Garmin USA, Inc. (collectively "Garmin") filed the first petition for IPR with the PTO under the post-grant provisions under the AIA. The Board instituted IPR on three of the '074 patent's twenty claims on obviousness grounds over three prior art patents and issued a final written decision, holding the claims unpatentable. The Board denied Cuozzo's motion to amend. Cuozzo appealed.

"There is no indication that the AIA was designed to change the claim construction standard that the PTO has applied for more than 100 years." Slip op. at 13.

On appeal, the Federal Circuit affirmed the Board's decision. First, the Court reiterated its previous holding in St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014), that 35 U.S.C. § 314(d), which states that "[t]he determination by the Director whether to institute an inter partes review . . . shall be final and nonappealable," precludes interlocutory review of decisions on whether to institute IPR. Slip op. at 6. The Court also concluded that § 314(d) precludes review of the decision whether to institute IPR even after a final written decision, stating that § 314(d) "is written to exclude all review of the decision whether to institute review." Id. The Court also cited In re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998), which held that, even absent a comparable provision expressly precluding appeal, the Federal Circuit would not set aside a flawed decision to institute reexamination proceedings. The Court left open the possibility, however, of the institution decision being "reviewable by mandamus after the Board issues a final decision." Slip op. at 9.

Regarding the Board's use...