End of the Line for Cuozzo – Broadest Reasonable Interpretation is the Standard for IPRs unless Congress Acts

  • Aug 15 2015
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  • Category: News

By: Stephen DiLorenzo

No rehearing of In re Cuozzo Speed Technologies, LLC will occur as the petition for rehearing en banc in In re Cuozzo, the first Federal Circuit opinion from an appeal of an Inter Partes Review (IPR) final judgment, was denied on July 8, 2015.[1]  Judge Dyk, in a succinct four paragraph concurring opinion, dismissed challenges to the use of the broadest reasonable interpretation standard in construing claims in IPRs, concluding that “[i]n the absence of evidence of congressional intent to abrogate the broadest reasonable interpretation standard, we should not act to adopt a different standard based on our own notions of appropriate public policy.”[2]  Judge Dyk went on to note that “[i]f the standard is to be changed, that is a matter for Congress.  There are pending bills which would do just that.”[3]

While the concurring opinion focused on the lack of “congressional intent to change the prevailing broadest reasonable interpretation standard,”[4] Judge Prost’s dissenting opinion called into question the relevance of congressional intent with regard to new enactments.  Specifically, Judge Prost distinguished the helpfulness of turning to congressional intent on occasions “when there is a settled judicial interpretation of a statutory section which Congress then re-enacts without change” from situations, as with respect to IPRs, where “[t]here is no statutory section, reenacted by Congress, which has been subject of settled judicial interpretation in favor of the broadest reasonable interpretation.”[5]  Instead of focusing on the lack of evidence of congressional intent, Judge Prost revisited the debate over whether IPRs are more like proceedings before the Patent Office or more like district court proceedings.  Opting for the latter, Judge Prost found that “an IPR is a curtailed, trial-like proceeding meant to efficiently resolve a challenge to patent validity” and that “[i]n this context, it makes little sense to evaluate the claim against the prior art based on anything [other] than the claim’s actual meaning.”[6]

Dissenting as well, Judge Newman declared that upholding of the broadest reasonable interpretation standard and the failure to rehear In re Cuozzo despite the “extensive amicus curiae participation” results in a loss for “the nation, for the ambitious plan of the America Invents Act is thwarted….”[7]  In particular, Judge Newman noted that “[t]he amici curiae stress the need for investment-reliable patent rights” and that such “collapses if the PTO applies a unique rule of patent claim construction, different from the law of claim construction that is applied in the courts.”[8]

The opinions of Judge Dyk, Prost, and Newman with regard to the petition for rehearing en banc in In Re Cuozzo differed significantly in approach: one focusing on congressional intent, another on the comparable analysis of whether IPRs are more like proceedings before the Patent Office or more like district court proceedings, and still another on public policy considerations.  However, despite this divide, there will be no rehearing en banc in In Re Cuozzo as the petition for rehearing was denied in a close 6-5 ruling.  Thus, the resolution of which claim construction standard is appropriate for IPRs may ultimately depend on whether Congress acts.


[1] In re Cuozzo Speed Technologies, LLC, Case No. 2014-1301, slip op. (Fed. Cir. 2015) (denying motion for rehearing en banc).

[2] Dyk concurrence at 2.

[3] Id.

[4] Id.

[5] Prost dissent at 2.

[6] Id. at 5, 9.

[7] Newman dissent at 1.

[8] Id. at 4.