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Standard of review in Inter Partes Review proceedings

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This month, the Federal Circuit denied a petition for rehearing en banc of its decisions in In re Cuozzo Speed Technologies LLC. In In re Cuozzo, the Federal Circuit addressed issues arising in inter parties review (IPR) proceedings, which were established by the America Invents Act.

An IPR is a proceeding in which the validity of patent claims are adjudicated in the U.S. Patent Office by the Patent Trial and Appeal Board. One of the issues decided in In re Cuozzo was the proper standard for claim construction in an IPR. At issue was whether the broadest reasonable interpretation (BRI) standard for claim construction applied during prosecution of a patent application should be applied in IPRs, rather than the adjudicatory standard applied in district courts in which claims in a patent are construed based rules of claim construction.

Under the BRI standard, claim terms are given their broadest reasonable interpretation; they are not constrained by ordinary meaning, the specification of the patent nor the prosecution history of the patent. During prosecution, when the patent examiner has no record on which to rely, the BRI is a reasonable starting point to ensure that as prosecution proceeds the claims and their meaning are honed. During prosecution the applicant is fee to amend claims and provide arguments for patentability. The specification of the application, the amendments of the claims and arguments, the comments of the Examiner and withdrawal of rejections create the record upon which claims in a patent are construed.

It is in light of the record and the accepted rules of claim construction that claims are construed in adjudicatory proceedings in district court. In such proceeding, it would not be logical to give the claims the broadest reasonable interpretation; the claims issue in light of the record. The meaning ultimately given to the claims by the applicant and the patent examiner should not be ignored. An IPR, while a proceeding in the Patent Office, is an adjudicatory proceeding. If claims are given their BRI, prosecution essentially begin de novo. But during an IPR, the opportunity to amend claims is very limited and rare. The patentee does not have an opportunity to address by amendment prior art that would not be encompassed by the claims or relevant if they were interpreted as in a district court proceeding.

Since an IPR considers validity of issued claims, it would be logical to construe the claims consistent with the record. The majority of the panel the In re Cuozzo decisions, and in the denial of rehearing en banc, however, did not agree. They held that the standard for review in IPR proceedings is BRI. Under such standard, claims, which would be valid based on the vetting that occurs during often years of prosecution, are invalidated. Thus, many members of the patent bar as well as the dissent, consider this not to be the appropriate standard. It is now up to the Congress in pending legislation to define the appropriate standard of review in IPRs.

-Submitted by Stephanie Seidman, Dentons US LLP.

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