Relevant to the dissent of Judge Newman in the Cuozzo case [see earlier IPBiz post:
CAFC in Cuozzo: § 314(d) prohibits review of the decision to institute IPR even after a final decision
], note that section 9 of the current Goodlatte patent bill, and more importantly of the previous Goodlatte bill, modified the AIA so that claim construction by the USPTO in IPR would be according to that of district courts, and thus not "broadest reasonable interpretation."
This shows that Judge Newman was correct on Congessional intent, at least in the last few years.
Related to a discussion of the previous Goodlatte bill (HR 3309):
Which passed the House 5 Dec 2013:
(Sec. 9) Amends the Leahy-Smith America Invents Act (AIA) to:
- limit the grounds for invalidity of a patent claim that a post-grant review petitioner is prohibited, by estoppel, from asserting in subsequent civil actions (or certain U.S. International Trade Commission [USITC] proceedings) to only those grounds that the petitioner actually raised during post-grant review (currently, the petitioner is estopped from asserting claims that the petitioner raised or could have raised during such review);
- require claims of patent in post-grant and inter partes review proceedings to be construed in the same manner as a court would construe such claims in a civil action to invalidate the patent, including by interpreting the claim in accordance with its ordinary and customary meaning, as well as the prosecution history pertaining to the patent (currently, the USPTO construes claims by considering the broadest reasonable interpretation);
- codify judicial doctrine relating to the consideration of prior art in cases of double patenting for the purpose of determining the nonobviousness of a second patent's claimed invention, thereby specifying that such doctrine continues to apply under the AIA's first-inventor-to-file patent system;
- revise the transitional covered business method patent review program to expand the scope of prior art that may serve as the basis of a challenge and permit the USPTO to waive filing fees; and
- exclude any time consumed by an applicant's request for continued examination from the calculation of a patent term adjustment that is based on the USPTO failing to issue a patent within three years.
Perhaps Congress might want to contemplate clarifying 314(d).