Summary
The Supreme Court held that 35 U.S.C. § 314(d) generally bars judicial review of the Patent and Trademark Office's decision to institute inter partes review, including the statutory-institution challenge presented in this case. The Court also held that the regulation requiring the Patent Trial and Appeal Board to apply the broadest reasonable construction standard in inter partes review was a reasonable exercise of the agency's rulemaking authority. The Federal Circuit's judgment was affirmed.
Topics
Practice areas
Questions Presented
- Whether 35 U.S.C. § 314(d) bars judicial review of the Patent Office's decision to institute inter partes review based on a challenge that the petition failed to identify claims 10 and 14 with particularity.
- Whether 35 U.S.C. § 316(a)(4) authorizes the Patent Office to promulgate a regulation requiring the broadest reasonable construction of patent claims during inter partes review.
Holdings
- Section 314(d) bars judicial review of Cuozzo's challenge to the Patent Office's institution of inter partes review because the challenge was an ordinary statutory dispute closely tied to the agency's determination to institute review.
- The Patent Office's regulation requiring the broadest reasonable construction of patent claims during inter partes review is a reasonable exercise of the rulemaking authority delegated by Congress.
Key quotations
“Nevertheless, in light of § 314(d)'s own text and the presumption favoring review, we emphasize that our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review.” (2141)
“Such “shenanigans” may be properly reviewable in the context of § 319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”” (2142)
“This helps ensure precision while avoiding overly broad claims, and thereby helps prevent a patent from tying up too much knowledge, while helping members of the public draw useful information from the disclosed invention and better understand the lawful limits of the claim.” (2145)
Factual background
Cuozzo held a patent for a speedometer system using a GPS receiver and a rotating colored filter to indicate when a vehicle exceeded the applicable speed limit. Garmin petitioned for inter partes review, expressly challenging claim 17 as obvious based on the Aumayer, Evans, and Wendt patents. The Board also reviewed dependent claims 10 and 14 because it viewed them as logically linked to claim 17, found all three claims obvious, denied Cuozzo's proposed amendments, and cancelled the claims.
Procedural history
Garmin International, Inc., and Garmin USA, Inc., petitioned for inter partes review of claims in Cuozzo's patent. The Patent Trial and Appeal Board instituted review of claims 10, 14, and 17, found them obvious, denied Cuozzo's motion to amend, and cancelled the claims. The Federal Circuit affirmed and denied rehearing en banc. The Supreme Court affirmed the Federal Circuit.