In re Cuozzo Speed Techs.

Under 35 U.S.C. §314(d), higher courts are precluded from reviewing a PTO decision to institute inter partes review. When the PTO considers claims under inter partes review, the broadest reasonable interpretation standard should be used to construe the claims.

Opinion (Dyk): Appellant Cuozzo Speed Technologies (“Cuozzo”) is the owner of a patent for a method to display a vehicle’s current and the speed limit on GPS navigation systems. When the vehicle drives over the speed limit a red filter is superimposed over the white speedometer to alert the driver. Garmin International, Inc. and Garmin, USA, Inc. (“Garmin”) petitioned the USPTO for inter partes review (“IPR”), claiming that Cuozzo’s patent was obvious. The Patent Trial and Appeal Board (“Board”) granted IPR and found that several of the claims were obvious. Cuozzo appealed to the Court and Garmin’s motion to withdraw as an appellee was granted. On appeal, the Court considered (1) whether the Court has the jurisdiction to review PTO’s decision to implement IPR, (2) whether the broadest reasonable interpretation (“BRI”) standard should be applied in IPR’s, (3) whether the Board properly considered Cuozzo’s claims under this standard, (4) whether Cuozzo’s claims were obvious, and (5) whether the Board properly denied Cuozzo’s motion to its claims.

The Court held that under 35 U.S.C. §314(d), it was precluded from reviewing a PTO decision to institute inter partes review. Next, the Court held that the BRI standard should be applied in IPR because the PTO has historically applied this standard when interpreting unexpired patents, and additionally, 37 C.F.R. § 42.100(b) states that the BRI standard shall be applied in claim construction of unexpired patents. The Court reviewed the Board’s claim construction de novo and affirmed the Board’s interpretation of Cuozzo’s claims under the BRI standard. The Court affirmed the Board’s determination that Cuozzo’s claims were obvious because, while the claims do contain nonobvious subject matter, the claims are broad enough to also cover obvious subject matter that is displayed in three prior patents. Under 35 U.S.C. § 316(d)(3), amendments that would broaden the scope of the original claims are prohibited. The Court affirmed the denial of Cuozzo’s motion to amend its claims because the proposed amendments would broaden the scope of the original claim by encompassing unoriginal apparatuses or processes. Accordingly, the Court AFFIRMED the Board’s final determination that the claims obvious and therefore not patentable.