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January 18, 2016


This report sounds like Couzzo was normally objecting to the [IPR and Fed. Cir.] BRI claim interpretation being too broad, when, strangely, the opposite was the case. Cuozzo was consistently arguing for a broader than BRI claim interpretation!* That, of course, is the opposite of the normal and logical objection to BRI in an IPR.
A broader claim interpretation could only make the odds of reversing the IPR decision worse. so it it difficult to see why Couzzo cert question number 1 is not an improper request for an advisory opinion in this unusual case?

*even attempting an illegal patent claim broadening by amendment in the IPR.


I've reviewed the Federal Circuit panel decision with respect to proposed Claim 21 which was offered by the patentee in the IPR and was rejected by the PTAB for lack of "written description," as well as allegedly "broadening" the claim scope, even under BRI. Here's proposed Claim 21:

“a speedometer integrally attached to [a] colored display, wherein the speedometer comprises a liquid crystal display, and wherein the colored display is the liquid crystal display.”

Frankly, I don't see Claim 21 as trying to "broaden" the claim scope but instead offering a potential narrowing by the patentee. Indeed, that's the whole problem with the excessively restrictive motion to amend practice in IPRs which apply the BRI standard of patent application prosecution but then unduly burden the patentee with having to then prove that the proffered amendment is patentable on its face.

Also, if, as alleged by the patentee, the "PTO relied on prior art that Garmin did not identify in its petition as grounds for IPR," you have a potential violation of either procedural or substantive "due process." For the Federal Circuit to say that 314(d) makes any such alleged violation of "due process" completely unreviewable by any court is either a misinterpretation of 314(d), or if correctly interpreted, renders 314(d) unconstitutional as violating "due process" on its face.

Re the second cert question expressed above as: "The Court also agreed to consider the extent to which the Board's decision to institute an IPR is reviewable when the Board does not confine itself to the art and grounds asserted in the IPR petition."
That suggests a due process issue. But as the Fed. Cir. clearly noted, all the applied prior art patents and grounds WERE asserted in the IPR petition [i.e., the patent owner was fully on notice ab initio] but one patent in the combination of patents was not asserted against some subject claims in the petition which the Board did in its final decision.

Re: "This case .. has the potential to significantly change (and indeed, may level the playing field) for these proceedings."
This is because some people have convinced themselves that changing from BRI to Phillips claim construction would make a huge difference in the outcomes of IPRs. However, that one difference does not seem nearly that significant to others, including some IPR experts. BRI, if properly applied by APJs, considers much of the same intrinsic evidence as Phillips claim interpretations. Patent owners are also free to submit declarations of extrinsic evidence in support of their own desired claim interpretations. Less than a handful of Board IPR decisions have been reversed by the Fed. Cir. on claim interpretation issues.
The far more important reason for IPR claim rejection rates are their vastly more extensive and thorough prior art searches and presentations, and their evaluations against the claims by patent attorney APJs. Also, the number of IPRs refused institution, or settled without a decision, must be statistically considered. Furthermore, alleged average IPR claim rejection rates are missleading. Recent statistics showed that the IPR claim rejection rate is very much lower if one excludes the large number of 103 rejected broad computerized functional claims of the type that are now also judicially vulnerable under Alice-101. Nor are valid comparisons to validly decisions in D.C. litigation easy when something like 97% of patent suits are settled, or decided solely on non-infringement, without any validity determination.

"the number of IPRs refused institution, or settled without a decision, must be statistically considered."


Fair enough point made. But that still doesn't excuse the PTAB from compliance with the AIA statutes, or playing fairly according to its owns promulgated rules in in IPRs. And the Federal Circuit can't simply hide behind either a misinterpretation, or worse, an unconstitutional interpretation of 314(d) when "due process" is being violated in IPRs.

EG, the Fed. Cir. opinion deals with the Cuozzo claim broadening attempts in detail, including the long established law that narrowing an issued patent claim in one respect does not excuse broadening it in any other respect (so that it could read on anything it did not read on before). Only a broadening reissue filed within two years of patent issuance can do that.

EG, if you are referring to Cuozzo cert question 2 re alleged statutory or rule violations, hopefully that will be dealt with by the Sup. Ct. It should be fully clarified that the IPR statute in question is only a bar to INTERLOCUTORY appeals of only the initial Board decision that sufficient pleading and evidence has been provided to proceed [which is common to much other litigation]. That is, NOT a bar to review of any illegality as part of the normal appeal of the IPR decision.

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