A sharply divided Federal Circuit denied Cuozzo Speed Technology’s petition for rehearing en banc on the Broadest Reasonable Interpretation (BRI) standard used in Inter Partes Review (IPR).
Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna voted for en banc review, but could not persuade Judges Lourie, Dyk, Wallach, Taranto, Chen, and Hughes to reconsider In re Cuozzo Speed Tech (Fed. Cir. 2015). According to the dissent, IPR should employ the same claim interpretation standard as district court litigation because:
- IPR was designed with the intent of “bearing the efficiency and finality of district court adjudications of patent validity,” and
- IPR does not provide a “robust right to amend” claims during the proceeding, which justifies use of the BRI standard during prosecution, reexamination, and reissue.
In a concurring opinion, Judge Dyk stressed that the Patent Office has consistently employed the BRI standard in a variety of proceedings, and there is no evidence that Congress intended to change this Patent Office practice for IPR. Additionally, while the opportunity to amend the claims is restricted, “it is thus nonetheless available” in the IPR setting.
Notably, the panel opinion was revised to acknowledge that the case “does not involve any restriction on amendment opportunities that materially distinguishes IPR proceedings from their predecessors in the patent statute.” The PTAB rejected the amendment proposed by Cuozzo for broadening the scope of the claims in violation of § 316(d)(3). Broadening amendments have long been forbidden in reissue (beyond two years) and reexamination proceedings, where the Patent Office also employs the BRI standard. The decision leaves open the question of whether other restrictions on amendments unique to IPR practice are inconsistent with the justification for using the BRI standard.