On November 3, 2014, the Federal Circuit heard oral argument in In re: Cuozzo Speed Technologies LLC, No. 2014-1301, the first IPR filed under the AIA and the first IPR final written decision. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-0001, (Paper 59, Nov. 13, 2013) (Final Written Decision). In its briefing, Cuozzo appealed the final written decision of the PTAB cancelling all of the challenged patent claims, arguing that it could also appeal the earlier institution determination.
With respect to the institution determination, Cuozzo asserted that the PTAB erred in granting institution on claims 10 and 14 on the same grounds as set forth for dependent claim 17, but not expressly set forth for claims 10 and 14. Cuozzo argued that the PTAB improperly instituted on grounds not raised in the petition. The PTO first replied that the instituted grounds are not new, because the grounds for the narrower dependent claim by definition also apply to the broader claims from which it depends. Second, the PTO replied that the Federal Circuit does not have jurisdiction to review the PTO’s decision to institute inter partes review. The PTO cited to the statute (35 U.S.C. § 314(d)) which states that the determination whether to institute is final and nonappealable, and only expressly provides for review of the PTAB’s final decision on patentability. Cuozzo disagreed that the PTO is completely shielded from review of the institution decision, arguing that the only aspect of the institution determination that cannot be appealed is the PTO’s discretionary determination whether there is a reasonable likelihood that the petitioner will prevail.