In Re Cuozzo Speed Technologies, LLC
793 F.3d 1297
Fed. Cir.2015Background
- This en banc rehearing petition arises from Cuozzo Speed Technologies’ challenge to the Patent Office’s use of the "broadest reasonable interpretation" (BRI) claim construction standard in inter partes review (IPR) proceedings and the PTO regulation adopting that standard.
- The panel denied rehearing en banc; four judges (DyK, Lourie, Chen, Hughes) concurred in that denial, defending the historical PTO use of BRI and the PTO’s rulemaking authority under the AIA.
- A multi-judge dissent (Prost, Newman, Moore, O’Malley, Reyna) argued that IPRs are adjudicative, surrogate district-court–like proceedings and therefore should use the district-court claim construction (the intrinsic/ordinary-meaning approach), not BRI.
- The dissenters emphasized differences between IPRs and traditional PTO examination (limited amendment rights, curtailed proceedings, trial-like record) and argued those differences make BRI inappropriate for issued claims.
- A separate dissent (Judge Newman) stressed amici concerns (major industry groups) that divergent PTO claim construction undermines predictability, investment incentives, and the AIA’s purpose.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether BRI applies to claim construction in IPRs | Cuozzo: IPRs should use district-court claim construction because they adjudicate validity of issued patents | PTO/Intervenor: BRI has century-long PTO pedigree and is appropriate under PTO rulemaking for PTO proceedings including IPRs | Court denied rehearing en banc and the concurrence defended continuing application of BRI in IPRs (no en banc change) |
| Whether Congress clearly displaced BRI in AIA | Cuozzo: AIA created a new, court-like post-grant adjudicative regime; silence does not ratify BRI | PTO: AIA is silent about changing the long-established PTO practice; Congress delegated rulemaking authority to PTO | Court (per concurrence) found no clear congressional intent to replace BRI and deferred to PTO practice; dissenters disagreed |
| Whether the PTO had statutory authority to adopt BRI regulation and merits of deference | Cuozzo: §316 does not authorize substantive change and regulation is inconsistent with AIA’s adjudicative intent; even under Chevron, BRI is unreasonable for IPRs | PTO: §316 grants rulemaking to establish and govern IPRs, so regulation is permissible and entitled to deference | Panel and concurrence upheld PTO rulemaking authority in context; dissent argued the regulation is outside congressional intent and unreasonable even under Chevron |
Key Cases Cited
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1297 (Fed. Cir. 2015) (decision at issue concerning BRI in IPRs)
- In re Prater, 415 F.2d 1393 (C.C.P.A. 1969) (BRI appropriate during patent examination where claims are amendable)
- In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) (distinguishing adjudicatory proceedings and endorsing BRI where amendment is available)
- In re Rambus, 753 F.3d 1253 (Fed. Cir. 2014) (BRI in certain post-issuance contexts but not where claims cannot be amended)
- Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed. Cir. 2005) (district courts assign fixed, legally operative claim meaning)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (claims must inform skilled artisans of scope with reasonable certainty)
- Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (Congressional silence ordinarily not interpreted as adoption)
- Lorillard v. Pons, 434 U.S. 575 (1978) (re-enactment can show congressional intent to adopt judge-made interpretation)
- FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120 (2000) (agency regulation must be grounded in statutory authority)