In Re Cuozzo: The Federal Circuit Affirms The PTAB's Finding Of Unpatentability

The first Federal Circuit decision from an appeal of a Final Written Decision in an Inter Partes review (IPR) affirmed the Patent Trial and Appeal Board (PTAB) on all grounds. In re Cuozzo Speed Technologies, Inc., 2014-1301 (Fed. Cir. Feb. 4, 2015). The decision clarifies several issues affecting AIA Trials:

PTAB decisions on whether to institute IPR are non-appealable; Claims are to be given their broadest reasonable interpretation in IPR; and A motion to amend the patent in an IPR may not introduce substitute claims that "would encompass any apparatus or claim that would not have been covered by the original claims." Background

Cuozzo Speed Technologies, Inc. (Cuozzo) is the assignee of U.S. Patent No. 6,778,074 (the '074 patent), titled "Speed limit indicator and method for displaying speed and the relevant speed limit." Garmin International, Inc. and Garmin USA, Inc. (collectively, Garmin) petitioned for IPR of claims 10, 14, and 17 of the '074 patent.1 Garmin filed the petition on September 16, 2012, the first day on which IPR became available, and the resulting IPR was the first IPR ever instituted.2 The PTAB instituted IPR on all of the challenged claims, and ultimately determined the claims to be unpatentable as obvious. The PTAB also denied Cuozzo's motion to amend the patent by substituting new claims 21 to 23 in place of the challenged claims.3

Decisions on Whether to Institute are Non-Appealable

On appeal, the Federal Circuit confirmed that a decision to institute an IPR is non-appealable. 35 U.S.C. § 314(d) provides that "a determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." Having previously held that § 314(d) precludes an interlocutory review of the Director's determination to institute an IPR, the Federal Circuit "conclude[d] that § 314(d) prohibits review of the decision to institute IPR even after a final decision."4 Thus, the Federal Circuit "lack[s] jurisdiction to review the PTO's decision to institute IPR." The court did not decide whether mandamus review is available. Nevertheless, the court noted that the circumstances in In re Cuozzo would not warrant such a review.5

Thus, the decision underscores the importance of the petition for IPR and the patent owner's response to the petition. If the petition is denied, it is likely that the petitioner may not get another bite at the apple. Not only may a petitioner have missed the one-year statutory...