Cuozzo Speed Technologies, LLC v. Lee

Supreme Court of the United States · 2016 · Administrative Law

Administrative LawJudicial ReviewAgency RulemakingPatent Office Inter Partes ReviewAPAjudicial review preclusionstrong presumption of reviewabilityclear and convincing indications

Facts

Garmin petitioned for inter partes review of all 20 claims of Cuozzo's patent and expressly argued that claim 17 was obvious in light of three prior patents. The Board instituted review not only on claim 17 but also on claims 10 and 14, reasoning that those claims were logically linked because claim 17 depended on claim 14, which depended on claim 10. After review, the Board concluded that claims 10, 14, and 17 were obvious in light of the cited prior art, denied Cuozzo's motion to amend, and canceled those claims. Cuozzo argued that review of claims 10 and 14 was improperly instituted because Garmin had not challenged them with particularity, and that the Board used the wrong claim-construction standard.

Issue

Does 35 U.S.C. §314(d) bar judicial review of the PTO's decision to institute inter partes review when the patent owner argues the petition did not challenge certain claims with particularity? Does 35 U.S.C. §316(a)(4) authorize the PTO to require use of the broadest reasonable construction standard in inter partes review rather than the ordinary-meaning standard used by courts?

Rule

Section 314(d)'s command that the PTO's determination whether to institute inter partes review 'shall be final and nonappealable' bars judicial review of ordinary challenges to institution decisions that are closely tied to the application and interpretation of statutes governing institution, such as whether the information in the petition warranted review. But the Court did not decide the effect of §314(d) on constitutional questions, questions depending on less closely related statutes, or questions reaching well beyond that section. Separately, where the statute grants the PTO authority to issue regulations governing inter partes review and does not unambiguously prescribe a claim-construction standard, the PTO may reasonably adopt the broadest reasonable construction standard.

🔒

See the holding & full analysis

Create a free KwikCourt account to unlock the rest of this brief — and practice the case.

The court's holding and reasoning
Doctrine tests, pitfalls & exam hypotheticals
10 practice questions + 4 AI-graded essays on this case

Free sample · practice this case

Test yourself

One of 10 multiple-choice questions for this case. Pick an answer to see why.

In Denver, Meridian Circuit Labs owned a patent on warehouse sensors. Apex Trail Systems petitioned for inter partes review, identifying one prior-art reference for claim 8 and arguing that claim 8 rendered claim 11 obvious because claim 11 expressly incorporated all of claim 8's limitations; the Board instituted review on both claims and later canceled them in a final written decision.

On appeal, Meridian argues that the petition did not state the challenge to claim 11 "with particularity" because it discussed claim 8 in detail but did not separately spell out each limitation of claim 11. Is that argument reviewable?

Explanation. Section 314(d) bars review of ordinary challenges to institution decisions when the challenge is closely tied to the application and interpretation of statutes governing institution. A claim that the petition lacked sufficient particularity is, under the majority's reasoning, little more than a challenge to the Board's threshold conclusion that the petition's information justified review. (Derived from Cuozzo Speed Technologies, LLC v. Lee (n.d.).)