By Robert Asher. Co-Chair of the Patent Practice Group
Challenges to issued U.S. patents have grown at an alarming rate since the advent of inter partes review (“IPR”) on September 16, 2012. IPR is a procedure introduced under the America Invents Act that allows for challenging the validity of an issued patent in the Patent Office rather than in the courts.
One of the driving forces behind the popularity of the new procedure is that the implementing rules require the Patent Trial and Appeal Board (“PTAB”) to use the “broadest reasonable construction in light of the specification of the patent” when evaluating patents whose validity is challenged. By construing the patent claims more broadly than is practiced in a court of law, the PTAB makes the patent claims more likely to read on the teachings of prior art references. The result? Claims are more likely to succumb to an anticipation or obviousness challenge.
The very first IPR, decided in November 2013 by the PTAB, has now become the first to be considered on appeal by the Federal Circuit. On February 4, the court’s 2-1 decision in Garmin v. Cuozzo Speed Technologies affirmed the PTAB in all respects, agreeing that three claims of the challenged patent were invalid for obviousness.
Cuozzo Speed Technologies held a patent for “a speedometer integrally attached to [a] colored display” that uses GPS signals to alert drivers to the speed limit at the driver’s location. The company was unsuccessful with its patent claims before the PTAB because “integrally attached” was construed to require “discrete parts physically joined together as a unit without each part losing its own separate identity.”
Cuozzo sought a broader construction that would cover a display that integrated the functions and structures of the two claimed parts in a single display structure. To the PTAB and the court, such an integral structure lacked the required attachment of two parts.
Despite Cuozzo’s insistence on a broader claim construction, it paradoxically challenged the PTAB’s use of the “broadest reasonable interpretation” (BRI) standard for construction. Cuozzo argued that BRI was applicable only in an examination before a patent examiner, not in an adjudicative IPR procedure before the PTAB where only an extremely limited opportunity to amend the claims is available. (more)
One of the driving forces behind the popularity of the new procedure is that the implementing rules require the Patent Trial and Appeal Board (“PTAB”) to use the “broadest reasonable construction in light of the specification of the patent” when evaluating patents whose validity is challenged. By construing the patent claims more broadly than is practiced in a court of law, the PTAB makes the patent claims more likely to read on the teachings of prior art references. The result? Claims are more likely to succumb to an anticipation or obviousness challenge.
The very first IPR, decided in November 2013 by the PTAB, has now become the first to be considered on appeal by the Federal Circuit. On February 4, the court’s 2-1 decision in Garmin v. Cuozzo Speed Technologies affirmed the PTAB in all respects, agreeing that three claims of the challenged patent were invalid for obviousness.
Cuozzo Speed Technologies held a patent for “a speedometer integrally attached to [a] colored display” that uses GPS signals to alert drivers to the speed limit at the driver’s location. The company was unsuccessful with its patent claims before the PTAB because “integrally attached” was construed to require “discrete parts physically joined together as a unit without each part losing its own separate identity.”
Cuozzo sought a broader construction that would cover a display that integrated the functions and structures of the two claimed parts in a single display structure. To the PTAB and the court, such an integral structure lacked the required attachment of two parts.
Despite Cuozzo’s insistence on a broader claim construction, it paradoxically challenged the PTAB’s use of the “broadest reasonable interpretation” (BRI) standard for construction. Cuozzo argued that BRI was applicable only in an examination before a patent examiner, not in an adjudicative IPR procedure before the PTAB where only an extremely limited opportunity to amend the claims is available. (more)
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