Supreme Court Review 2016/2017 TERM
SATURDAY, MAY 27, 2017
CLICK HERE TO TRACK THIS CASE

Issue:  IPR Proceedings

Cuozzo Speed Technologies, LLC v. Lee

15-446

QUESTION(S) PRESENTED

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, which established a new post-grant adjudicatory process for challenges to the validity of patents. The Act created a body within the Patent and Trademark Office, called the Patent Trial and Appeal Board (Board), to hear those challenges as a quick and costeffective alternative to litigation. One of the new types of adjudicative proceedings, inter partes review (IPR), has been both unexpectedly popular and surprisingly lethal. Since the inception of IPR, patent challengers have filed over 3,400 petitions, and nearly 85% of the IPR proceedings to date have resulted in the cancellation of some or all claims in the patent under review.

A primary reason for the high cancellation rate is that, although IPR was expressly designed to be a surrogate for litigation, the Board does not use the same claim construction standard as federal courts. Rather than construe the claim in an issued patent according to its plain and ordinary meaning, as a federal court would be required to do, the Board gives the claim its broadest reasonable interpretation, which is a protocol used by examiners in reviewing patent applications. Of course, the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. Consequently, the Board’s broad interpretation allows for differing determinations of validity in IPR proceedings and litigation.

Over a dissent by Judge Newman, a divided panel of the Federal Circuit affirmed the Board’s use of the broadest-reasonable-interpretation standard for claim construction. The panel majority also held that, even if the Board had exceeded its statutory authority in instituting an IPR proceeding in the first place, the Board’s decision to institute was judicially unreviewable. The court of appeals denied rehearing by a vote of 6-5, over a joint dissent by Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna, as well as a separate dissent by Judge Newman. The five dissenting judges addressed the merits of, and would have rejected, the Board’s claim construction standard.

The questions presented are as follows:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

DECISION

Decided June 20, 2016 HOLDING

Section 314(d) bars Cuozzo’s challenge to the Patent Office’s decision to institute inter partes review. The Patent Office regulation requiring the Board to apply the broadest reasonable construction standard to interpret patent claims is a reasonable exercise of the rulemaking authority granted to the Patent Office by statute.

Agree Dissent image Justice Sotomayor
Agree Dissent Sotomayor
Author image Justice Breyer
Author Breyer
Agree Concur image Justice Thomas
Agree Concur Thomas
Recused image Justice Scalia
Recused Scalia
Agree image Chief Justice Roberts
Agree Roberts
Agree image Justice Kennedy
Agree Kennedy
Agree image Justice Ginsburg
Agree Ginsburg
Agree Dissent image Justice Alito
Agree Dissent Alito
Agree image Justice Kagan
Agree Kagan

BREYER, J., delivered the opinion for a unanimous Court with respect to Parts I and III, and the opinion of the Court with respect to Part II, in which ROBERTS, C. J., and KENNEDY, THOMAS, GINSBURG, and KAGAN, JJ., joined. THOMAS, J., filed a concurring opinion. ALITO, J., filed an opinion concurring in part and dissenting in part, in which SOTOMAYOR, J., joined.

Text of Opinion
pdf download

ORAL ARGUMENT

Argued April 25, 2016

Appearences
On Behalf of Petitioner Cuozzo Speed Technologies, LLC
Garrard R. Beeney, Esq.
On Behalf of Respondent Michelle K. Lee, Under Secretary of Commerce for Intellectual P
Curtis E. Gannon, Assistant to the Solicitor General
Transcript
pdf download
Audio
mp3 download
Merit Briefs
Brief for Cuozzo Speed Technologies, LLC (pdf download)
Brief for Michelle K Lee, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office (pdf download)
Reply Brief of Cuozzo Speed Technologies, LLC (pdf download)
Amicus Curiae Briefs
Amicus Brief of National Association of Patent Practitioners, Inc supporting Petitioner (pdf download)
Amicus Brief of Law Professors Gregory Dolin, et al supporting Petitioner (pdf download)
Amicus Brief of Mitchell Hamline School of Law Intellectual Property Institute supporting Petitioner (pdf download)
Amicus Brief of Federal Circuit Bar Association supporting Petitioner (pdf download)
Amicus Brief of Biotechnology Innovation Organization, et al supporting Petitioner (pdf download)
Amicus Brief of InterDigital, Inc, Tessera Technologies, Inc, et al supporting Petitioner (pdf download)
Amicus Brief of Patent-Practicing Technology Innovators supporting Petitioner (pdf download)
Amicus Brief of Intellectual Ventures Management, LLC supporting Petitioner (pdf download)
Amicus Brief of Pharmaceutical Research and Manufacturers of America supporting Petitioner (pdf download)
Amicus Brief of SightSound Technologies, LLC supporting Petitioner (pdf download)
Amicus Brief of 3M Company, et al supporting Petitioner (pdf download)
Amicus Brief of New York Intellectual Property Law Association supporting Petitioner (pdf download)
Amicus Brief of Unified Patents Inc supporting Respondent (pdf download)
Amicus Brief of Mylan Pharmaceuticals Inc supporting Respondent (pdf download)
Amicus Brief of AARP supporting Respondent (pdf download)
Amicus Brief of The American Bankers Association, et al supporting Respondent (pdf download)
Amicus Brief of Apple, Inc supporting Respondent (pdf download)
Amicus Brief of EMC Corporation supporting Respondent (pdf download)
Amicus Brief of Dell, et al supporting Respondent (pdf download)
Amicus Brief of Generic Pharmaceutical Association, et al supporting Respondent (pdf download)
Amicus Brief of CME Group, Inc, et al supporting Respondent (pdf download)
Amicus Brief of Public Knowledge supporting Respondent (pdf download)
Amicus Brief of Licensing Executives Society (USA and Canada), Inc in support of neither party supporting Neither Party (pdf download)
Amicus Brief of American Intellectual Property Law Association in support of neither party supporting Neither Party (pdf download)
Amicus Brief of Intellectual Property Owners Association in support of neither party supporting Neither Party (pdf download)
Amicus Brief of Microsoft Corporation and Professors Vincent Chiappetta and Lee A Hollaar in support of neither party supporting Neither Party (pdf download)
Amicus Brief of International Business Machines Corporation in support of neither party supporting Neither Party (pdf download)
Amicus Brief of The Intellectual Property Law Association of Chicago in support of neither party supporting Neither Party (pdf download)
Amicus Brief of the Association of the Bar of the City of New York supporting Neither Party (pdf download)
Amicus Brief of Medtronic, Inc in support of neither party supporting Neither Party (pdf download)
Amicus Brief of Paul R Michel in support of neither party supporting Neither Party (pdf download)

PROCEEDING BELOW

United States Court of Appeals for the Federal Circuit
Decided July 8, 2015
pdf download