In Re Cuozzo Speed Technologies, LLC
778 F.3d 1271
| Fed. Cir. | 2015Background
- Cuozzo Speed Technologies owns U.S. Patent No. 6,778,074 for a vehicle speed/limit display; independent claim 10 requires a GPS-linked display controller that "continuously update[s]" which speed readings violate the limit and a "speedometer integrally attached to said colored display."
- Garmin petitioned for inter partes review (IPR) of claims 10, 14, and 17; the PTO instituted IPR and the PTAB found those claims obvious over multiple prior-art combinations.
- The PTAB applied the PTO’s "broadest reasonable interpretation" (BRI) claim-construction standard and construed "integrally attached" as "discrete parts physically joined together as a unit without each part losing its own separate identity."
- Cuozzo moved to amend claims (substitute claims 21–23); the Board denied the motion, finding the substitute broadened claim scope and lacked written-description support.
- Cuozzo appealed; the Federal Circuit panel (majority: Judge Dyk) affirmed: (1) it held § 314(d) bars judicial review of the PTO’s decision to institute IPR, (2) upheld BRI in IPRs and the Board’s construction of "integrally attached," (3) affirmed the obviousness finding, and (4) affirmed denial of the motion to amend as impermissibly broadening.
Issues
| Issue | Cuozzo's Argument | PTO/Garmin's Argument | Held |
|---|---|---|---|
| Reviewability of institution decision | §314(d) does not bar post-final review; institution exceeded statute because Board relied on grounds not pled for claims 10 and 14 | §314(d) makes institution decision "final and nonappealable," precluding review | §314(d) bars review of institution decisions even after final judgment; mandamus rarely available and not shown here |
| Claim-construction standard in IPR | Phillips/ordinary-meaning standard should apply (district-court style) | PTO rule authorizes BRI for unexpired patents in IPRs | PTO may apply BRI in IPRs; regulation adopting BRI is permissible under §316/Chevron |
| Meaning of "integrally attached" | Broader: "joined or combined to work as a complete unit" to include single-LCD embodiment | Board’s BRI construction: physically joined but discrete parts; "attached" cannot mean a unit attached to itself | Board’s BRI construction affirmed as reasonable and supported by specification |
| Obviousness and motion to amend | Claim 10 not obvious; amendment (claim 21) merely narrows to single-LCD and should have been allowed | Prior art (Aumayer, Evans, Wendt, etc.) renders the asserted analog embodiment obvious; claim 21 would broaden original claim scope (it would capture single-LCD) | Obviousness affirmed (claims read on an obvious analog embodiment). Motion to amend denied because substitute claim would broaden scope and thus was properly refused |
Key Cases Cited
- St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (§314(d) bars interlocutory review of institution decisions)
- In re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998) (defects in institution do not necessarily invalidate a subsequent final decision)
- Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S. 2015) (standard of review for claim construction: factual findings for clear error, legal conclusions de novo)
- In re Rambus, Inc., 753 F.3d 1253 (Fed. Cir. 2014) (BRI applied in PTO proceedings involving unexpired patents)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (claims that read on obvious subject matter are unpatentable even if they also read on nonobvious subject matter)
- Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (U.S. 1984) (agency regulations entitled to deference if statute ambiguous and interpretation reasonable)
- In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) (historical justification for BRI in examination tied to opportunity to amend claims)