A Federal Circuit Split Saves Broadest Reasonable Interpretation Standard at PTAB

In a 6-5 ruling, the Federal Circuit declined to review en banc a panel decision approving the broadest reasonable interpretation standard for claim construction at the Patent Trial and Appeal Board. In re Cuozzo Speed Technologies, No. 2014-1301 (Fed. Cir. July 8, 2015). The six favoring broadest reasonable interpretation: Judges Dyk, Lourie, Chen, Hughes, Wallach, and Taranto. The five opposed: Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna.

Judge Dyk’s concurring opinion first highlighted the century-long practice of applying the broadest reasonable interpretation standard in a variety of USPTO proceedings. Against that backdrop, he found nothing in the AIA showing congressional intent to change the standard. Instead, Congress gave the USPTO rulemaking authority to prescribe regulations governing inter partes review, and the PTAB’s broadest reasonable interpretation standard is an application of that rulemaking authority. So, according to Judge Dyk, the BRI standard remains until Congress changes it in, for example, one of the currently pending bills, such as the Innovation Act, PATENT Act, and STRONG Patents Act.

Chief Judge Prost’s dissent characterized an IPR as a “new, court-like proceeding” to determine validity. She claimed that IPRs lacked “examinational hallmarks” that would justify broadest reasonable interpretation because, traditionally, it was used as “a useful tool, prior to patent issuance, for clarifying the metes and bounds of an invention.” IPRs, on the other hand, are “a completely new type of PTO proceeding,” one occurring after patent issuance and “bearing the efficiency and finality of district court adjudications of patent validity,” which requires actual claim meaning, not broadest reasonable interpretation. And given the “cabined” nature of the IPR amendment process, which requires the Board’s permission before amending, she found broadest reasonable interpretation unsuitable for IPRs.

Additionally, instead of interpreting the AIA’s silence on the broadest reasonable interpretation standard as implicit congressional approval, she claimed that the statute’s silence “has no meaning,” applying the general rule that “Congress’ silence is just that—silence.” She also rejected the alternative argument that even though Congress did not approve the broadest reasonable interpretation standard itself, in enacting the AIA it authorized the USPTO to adopt the standard by regulation. That authority, according to Chief Judge Prost, was limited to procedural regulations, rather than substantive ones, like the broadest reasonable interpretation standard, that would affect decisions to institute or later decisions.

Judge Newman’s own dissent agreed with the collective concerns raised by amici that the USPTO’s application of different law than that applied in courts would enhance, rather than diminish, “the gamesmanship, delay, and burdens of patent disputes.”

This case marked the first IPR petition ever filed, leading to the first appeal to the Federal Circuit from the first final IPR written decision by the PTAB. Given the sharp 6-5 split, voluminous amicus briefs, and the underlying implication of administrative law, this case seems a likely candidate for Supreme Court review.