CAFC’s majority says that a PTO’ decision to institute IPR is not appealable even after a final decision and a broadest reasonable interpretation rule applies in IPR

Yoshiya Nakamura | July 22, 2015

In Re Cuozzo Speed Technologies, LLC

July 8, 2015

Before: Newman, Clevenger, and DYK. Opinion by DYK. Dissenting opinion by Newman.


Garmin filed in the PTO a petition to institute an inter partes review (IPR) on patented claims owned by Cuozzo. The PTO granted the petition to institute the IPR and concluded that the claims at issue were obvious over prior art. Cuozzo appealed to CAFC, arguing: (1) the petition was defective as failing to identify prior art references for each claim; and (2) a broadest reasonable interpretation (BRI) standard should not be applied in the obviousness determination. CAFC held: (1) the statute prohibits a review on the PTO’s decision to institute the IPR even the final decision was on appeal; and (2) the BRI standard applies in IPR.

Japanese Summary

本判決は、(1)第三者の請求に基づく特許付与後レビュー(inter partes review; IPR)においてその請求書の内容に問題があった場合にそれをCAFCが審査できるか否か、および(2)クレーム解釈の基準として、最大限に広い合理的な解釈(a broadest reasonable interpretation: BRI)をIPRの審査に使用してよいか否かという争点に関するものである。


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Indefiniteness kills patent, as expert testimony cannot compensate for the failure of intrinsic evidence to provide a “reasonably certain” meaning to claim term.

Cindy Chen | July 15, 2015

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

June 18, 2015

Before: Moore, Mayer, Wallach. Opinion by Moore. Dissent by Mayer.


The validity of Teva Pharmceuticals’ patent hinged on the definiteness of the term “molecular weight”. Under a the old “insolubly ambiguous” standard, the Federal Circuit had determined once before that the term was indefinite. The Supreme Court vacated this indefiniteness determination in Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (Briefed by John Wang  ). The Federal Circuit was found to have erred by not giving proper deference to the lower court’s factual findings in construing the term “molecular weight”. Teva Pharmaceuticals’ short-lived victory lasted until the Federal Circuit once again reached the same conclusion that the term “molecular weight” was indefinite, this time under the new “reasonably certain” standard of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

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Inventive concept standing alone is not patent eligible

Rob Raheja | July 10, 2015

Internet Patents Corp. v. Active Network, Inc.,

June 23, 2015

Before: Newman (Opinion author), Moore and Reyna.

Claims to a method which allows the use of a conventional web browser Back and Forward button functions without loss of data were not patent eligible under 35 U.S.C. 101 because the inventive concept recited in the claim was not limited to any mechanism and thus remained abstract.

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CAFC says reissued patent can’t sail into safe harbor

Linda Shapiro | July 8, 2015

G.D. Searle LLC et al. v. Lupin Pharmaceuticals, Inc., et al.

June 23, 2015

Before: Prost, Bryson, and Hughes. Opinion by Bryson

The CAFC strictly construes the “safe harbor” provision of 35 USC § 121 and casts doubt on whether there are any circumstances in which reissue can be used to correct failure to file a divisional application.

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