First decision in Federal Circuit on first IPR decision Stefano John / NAIP Education & Training Group , European Patent Attorney
Recently the Federal Circuit has published its decision on the appeal from the very first IPR decision made under the changes introduced to the USPTO PTAB in light of implementation of the AIA. This first IPR decision was re Cuozzo Speed Technologies, LLC., which report can be found here (The first filed Inter Partes Review (IPR)). The decision went against the applicant in the PTAB (his claims were found obvious in light of prior art) and the decision was appealed to the Federal Circuit.
This is very interesting because the Federal Circuit has made some pronouncements on how this process of appealing decision should apply. The first important decision taken by the Federal Circuit was that the Federal Circuit did not have the right to decide on if the USPTO PTAB had the right to decide the case in the first place, irrespective of its outcome. This is important because there are many US practising attorneys who held the view that the USPTO could not do this (even though the statute seems to explicitly institute it). The court simply decided that mandamus (judicial remedy for higher courts to decide abuse in US administrative agencies allowed under the U.S. Administrative Procedures Act) could be a reliable judicial tool that applicants could use in event of serious USPTO abuse, but such serious abuse had not been proven in this case.
The second important decision was that the USPTO PTAB was right to not allow a proposed claim amendment that would broaden the scope of the claims, as this was not allowed for by statute after grant of the US patent.
The third important decision was that the USPTO PTAB was correct in using Broadest Reasonable Interpretation (BRI) as claim construction standard. This is interesting because, as has already been discussed in this article (Considerations on the state of PTAB as it enters the era of PGR), the District Courts and other higher courts have a different claim construction which is more limited than BRI (i.e. Phillips standard). Even though this case was appealed to the Federal Circuit, BRI was used in affirming that the PTAB had correctly determined instead of the Phillips standard. This of course does not mean that the Federal Circuit has to adopt the BRI standard, only that the USPTO PTAB was right to use it (as envisaged by statute).
It is also important to note that it was decided that the USPTO PTAB were correct in using all prior art cited during the proceedings, even one not cited in the petition. To conclude, the Federal Circuit has basically reiterated most aspects of both procedure and substantive issue of the USPTO PTAB decision. Thus it would seem that the Federal Circuit is not likely to reverse USPTO PTAB decisions in the future without strong cause. It thus becomes clear that the patent proprietor/opponent should try and fight his case in IPR hearings and not in appeal to the Federal Circuits in the hope of having his decision reversed easily.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
