In First Appeal Decision From A PTAB Final Written Decision, Federal Circuit Holds PTAB IPR Institution Decisions Not Appealable, Broadest Reasonable Interpretation Standard Proper For IPR Proceedings

On February 4, 2015, the Federal Circuit issued its first opinion addressing an appeal from a final written decision of the new Patent Trial and Appeal Board ("PTAB" or "Board") in post-grant proceedings under the America Invents Act ("AIA"). In affirming the PTAB's determination that the challenged claims were obvious, the Federal Circuit held that it had no jurisdiction to review on appeal the PTAB's decision instituting the underlying Inter Partes Review ("IPR") trial and that the PTAB properly employed the "broadest reasonable interpretation" ("BRI") standard in construing the reviewed claims.

The challenged claims of the patent at issue, U.S. Patent No. 6,778,074 ("the '074 patent"), owned by Appellant Cuozzo Speed Technologies, concern a device having a GPS receiver and a "display controller" that is "integrally attached" to a vehicle's speedometer, displays the vehicle's current speed as well as the current speed limit, and indicates whether the current speed exceeds the limit. Slip Op. at 2-3. Garmin International, Inc. (who, as a result of settlement, did not participate on appeal) challenged independent claim 10 and dependent claims 14 and 17 in the first IPR petition filed at the PTAB. Id. at 2.

In granting Garmin's IPR petition for each challenged claim, the PTAB did not institute the specific grounds asserted in the petition for anticipation and obviousness of claim 10 or the specific grounds asserted for obviousness of claim 14. Id. at 3-4. However, the PTAB did institute the grounds asserted for obviousness of claim 17 in the petition for specific combinations of references, and—while Garmin did not specifically assert those combinations against claims 10 or 14—the PTAB also used those combinations in instituting grounds for obviousness of claims 10 and 14. Id. at 4.

The PTAB ultimately issued a final written decision in which it interpreted the term "integrally attached" pursuant to the BRI standard to mean "discrete parts physically joined together as a unit without each part losing its own separate identity," denied Cuozzo's motion to amend claims 10, 14, and 17, and held that the claims were obvious over the combinations on which the PTAB decided to institute trial. Id. Cuozzo appealed, challenging (1) the PTAB's decision to institute the IPR based on grounds not specifically raised in the petition for claims 10 and 14, (2) the PTAB's decision to employ the BRI standard for claim construction, (3) the PTAB's ultimate...