Cuozzo Speed Technologies, LLC v. Lee

136 S.Ct. 2131 (2016)


If the Patent Office concludes that the cited prior art raises “a substantial new question of patentability,” the agency can reexamine the patent. §303(a). The Patent Office may cancel the patent (or some of its claims). Alternatively, the Director of the Patent Office can, on her “own initiative,” trigger such a proceeding. The patent holder can seek judicial review of an adverse final decision. §306. Presently any third party can ask the agency to initiate inter partes review of a patent claim. A petition must show “a reasonable likelihood that” the challenger “would prevail.” In 2002, P applied for a patent covering a speedometer that will show a driver when he is driving above the speed limit. In 2004, the Patent Office granted the patent. In 2012, Garmin (D) filed a petition seeking inter partes review of P's patent 20 claims. D claimed the invention described in claim 17 was obvious in light of three prior patents. The Board agreed to reexamine claim 17, as well as claims 10 and 14. After proceedings before the Board, it concluded that claims 10, 14, and 17 of the Patent were obvious in light of the earlier patents. The Board ordered claims 10, 14, and 17 canceled. P appealed and argued that the Patent Office improperly instituted inter partes review. P also argued that the Board, when construing the claims, improperly used the interpretive standard set forth in the Patent Office’s regulation (i.e., it gave those claims their “broadest reasonable construction,”), when it should have applied the standard that courts normally use when judging a patent’s validity (i.e., it should have given those claims their “ordinary meaning . . . as understood by a person of skill in the art.” The panel majority pointed out that §314(d) made the decision to institute inter partes review “nonappealable.” It also affirmed the application of the broadest reasonable construction standard on the ground (among others) that the regulation was a reasonable, and hence lawful, exercise of the Patent Office’s statutorily granted rulemaking authority. The Supreme Court granted P's petition for certiorari to review these two questions.