Bottom line: Defendants should strongly consider an Inter Partes Review (IPR), a proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) when accused of patent infringement because it may be easier to invalidate the patent at the PTAB instead of at the Federal district court. In re Cuozzo Speed Technologies, LLC (Fed. Cir. 2015), the Federal Circuit held that the claims are given their “broadest reasonable interpretation” during an IPR, and not the more narrow “ordinary and customary meaning to one of ordinary skill in the art” that would be applied at the district court. Under the broader standard, more prior art can be asserted against the patent being asserted, and in this sense, the patent is more likely to be invalidated.
In Cuozzo, the claimed invention was directed to an automobile speed limiter which displayed both a vehicle’s current speed and the speed limit. When the current speed is above the speed limit, then the speed limit is displayed as a red light. The current speed is displayed in white light when it is below the speed limit. The claims required that the speedometer 12 be “integrally attached” to the colored display 18. (see diagram below). A major portion of the opinion was dedicated to explaining whether the IPR should apply broadest reasonable standard typically applied during examination of a claim or the standard that the district court would have applied which would have resulted in a more narrow interpretation. Presumably, this issue was important to the parties because a broader interpretation may have invalidated the claim or avoided infringement, whereas narrow interpretation may have preserved validity and brought the defendant within scope of the claims for infringement.
The Federal Circuit held that the proper standard for interpreting claims in an IPR is the broadest reasonable interpretation standard. This opinion had a dissenting opinion. In comparing the reasons provided by the majority and the dissenter, the opinion really could have gone both ways. The decision came down to a philosophical discussion of whether the IPR should mimic more of an examination proceeding such as when the patent office is reviewing the claims of a patent application or an adjudicatory role such as one during formal litigation which resolves a dispute between parties.
During an examination proceeding, the claims can be amended as many times as needed. For example, if the broadest reasonable interpretation given by the examiner results in the claims being deemed anticipated or obvious, then the applicant can amend the claim language to resolve the issues raised by the examiner. In this situation, the broadest reasonable interpretation standard does not harm the inventor’s position much. On the other hand, during litigation between diametrically opposed parties, the patent applicant has no ability to amend the claims. Also, the rights of two opposing parties are being adjudicated. Hence, one cannot take the broadest reasonable interpretation since doing so may invalidate a patent that should be held valid or cause a defendant to be infringing when he/she shouldn’t be liable for patent infringement.
Regardless of one’s philosophical leanings, based on this decision, it appears that the IPR can be an effective way for a defendant to invalidate a patent. The broadest reasonable interpretation standard is very broad because the examiner is given great latitude in defining a claim term. In my patent prosecution experience, I have had many interpretations that appeared to go well beyond the broadest reasonable interpretation but in the end, I amended the claims to address the examiner’s concerns. It would be almost impossible to appeal and win against an examiner’s broadest reasonable interpretation. Additionally, unlike normal examination, during the IPR, the patent owner is given one opportunity to amend the claims or present a reasonable number of claims to avoid invalidity of its patent. They are not given an unfettered right to amend such as during examination. This increases the stakes for the patent owner to get it right the first time. It would be dangerous to slightly narrow the scope of the claims to avoid the prior art to maintain validity. The reason is that the new claim language might still be invalid under the broadest reasonable interpretation of the new claim language. If the patent owner got it wrong the first time, then it would be fatal to the underlying potential patent infringement case. The patent owner would need to significantly narrow the claim language to ensure validity is maintained. In narrowing the claims, the patent owner also needs to keep an eye on the ball by not excessively narrowing the claims because for the patent owner, the claims must cover the defendant’s products or methods.
Related article: PTAB must institute all challenged claims if single claim threshold is met
Even though the IPR is attractive for defendants, there may be other mitigating factors that might persuade one to litigate the issue at the district court instead of proceeding with the IPR. For example, IPRs have limited discovery and the defendant would be estopped from making the same arguments made during the IPR at the district court level.
I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.