Federal Circuit declines to review PTAB’s BRI standard en banc
A US appeals court has declined to review en banc whether the Patent Trial and Appeal Board (PTAB) should continue to apply the broadest reasonable interpretation (BRI) standard when construing patent claims.
In a 6-5 decision handed down yesterday, July 8, the US Court of Appeals for the Federal Circuit declined to hear the case before all 11 of its judges.
At the centre of the dispute is a patent owned by Cuozzo Speed Technologies, which has been involved in a fight with Garmin.
The patent, US number 6,778,074, covers technology for a “speedometer” used in cars and was challenged by Garmin in an inter partes review (IPR) filed in 2012.
In 2013, the PTAB ruled in favour of Garmin and declared the patent invalid.
In reaching its decision, the PTAB applied the BRI standard, which Cuozzo took exception to. The BRI allows patentees to amend their claims, whereas in litigation claims cannot be amended and courts take a narrower view of them.
Cuozzo argued that the PTAB should have instead interpreted the patent’s claims using the same method as a US district court.
The company appealed against the decision but it was rejected by the federal circuit in a 2-1 decision in February this year. It marked the first time the federal circuit had ruled on an IPR dispute.
Judge Pauline Newman wrote a dissenting opinion in the decision. Cuozzo then requested a review en banc.
But writing the majority opinion in yesterday’s ruling Judge Timothy Dyk said: “Nothing in the America Invents Act (AIA) indicates congressional intent to change the prevailing BRI standard.
“The dissents are wholly devoid of any evidence in the legislative history that Congress intended in the AIA to change the standard, and we must interpret the statute in light of the long history of the use of the BRI standard in USPTO proceedings.”
But Chief Judge Sharon Prost argued in a dissenting opinion that the PTAB is a “new, court-like proceeding designed to adjudicate the validity of issued patent claims” and therefore should interpret patent claims in the same way as a district court.
It is the PTAB’s job, like district courts’, to arrive at a “concise statement” regarding patent claims and not apply the BRI standard, she said.
“In obtaining a patent, a patentee discloses his invention to the public in exchange for a limited monopoly, as defined by the claims of the patent. To invalidate those claims using a different standard than one that considers the true meaning and scope of a claim would violate the bargain the patentee struck with the public,” she added.
Cuozzo declined to comment.
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