In Re Cuozzo Speed Technologies, LLC
793 F.3d 1268
| Fed. Cir. | 2015Background
- Cuozzo owns U.S. Patent No. 6,778,074 for a speed-limit indicator; Garmin petitioned for IPR of claims 10, 14, 17; Board held claims obvious and denied Cuozzo’s motion to amend to substitute claims 21–23; the Board construed “integrally attached” as discrete parts physically joined; the PTO instituted IPR on claims 10, 14, 17 based on grounds including Evans, Wendt, Aumayer; Cuozzo appeals Mamanda and jurisdiction issues raised; this court holds it lacks jurisdiction to review institution decision; Board’s final decision on obviousness and denial of amendment is affirmed; Cuozzo argues for broader claim construction and mandamus relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether §314(d) bars review of institution decisions | Cuozzo argues mandamus may review institution decisions | PTO argues §314(d) bars all review of institution decisions | Institution decision review barred by §314(d) |
| Whether mandamus is available to review institution or final decision | Cuozzo seeks immediate review due to lack of other remedies | PTO and court have limited mandamus pathways | Mandamus unavailable in this context; not clearly controlling here |
| Whether the Board properly applied the broadest reasonable interpretation standard | Cuozzo contends BRI is inappropriate for adjudicatory IPR | PTO and Board validly apply BRI under Chevron step two | BRI adopted and appropriate; substantial evidence supports construction |
| Whether the Board’s obviousness determinations are correct | Cuozzo argues non-obviousness or improper combinations | Aumayer, Evans, and Wendt render claims obvious | Claims 10, 14, 17 obvious; analog embodiment disclosed by cited references |
| Whether Cuozzo’s motion to amend to substitute claims 21–23 was properly denied | Amendment would not broaden beyond original disclosure | Substitute claim 21 broadens because it covers single-LCD embodiment; improper | Motion to amend denied as broadening; substitute claims not allowed |
Key Cases Cited
- St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (settled institute-review reviewability framework for IPRs)
- In re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998) (affirms finality of instituted proceeding decisions; no mandamus relief for defective institution decisions)
- In re Dominion Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir. 2014) (mandamus not available to challenge denial of petition for IPR)
- Procter & Gamble Co. v. Kraft Foods Global, 749 F.3d 1376 (Fed. Cir. 2014) (mandamus and review principles in IPR context; limits on immediate review)
- Yamamoto, 740 F.2d 1571 (Fed. Cir. 1984) (broadest reasonable interpretation during examination; rationale for amendment opportunity)