Cuozzo Speed Techs.
Justia Summary
A third party may ask the Patent and Trademark Office (PTO) for inter partes review to reexamine claims in an issued patent and to cancel any claim found to be unpatentable in light of prior art; the decision “whether to institute an inter partes review . . . shall be final and non-appealable,” 35 U.S.C. 314(d). PTO is authorized to issue regulations governing inter partes review. One such regulation provides that, during inter partes review, a patent claim “shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” Garmin sought inter partes review of Cuozzo’s patent, asserting that claim 17 was obvious in light of prior patents. PTO reexamined claims 17, 10 and 14, finding those claims to be logically linked to the challenge; concluded that the claims were obvious in light of prior art; and canceled the claims. The Federal Circuit and Supreme Court affirmed. Section 314(d) bars a challenge to the decision to institute review. The “strong presumption” favoring judicial review is overcome by clear and convincing indications that Congress intended to bar review of the determination “to initiate an inter partes review under this section,” or where the challenge consists of questions closely tied to statutes related to that determination. Cuozzo’s claim does not implicate a constitutional question, nor present other questions beyond “this section.” The regulation requiring the broadest reasonable construction standard is a reasonable exercise of PTO's rulemaking authority, which is not limited to procedural regulations. The purpose of inter partes review is not only to resolve disputes among parties, but also to protect the public’s “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.” Congress did not dictate what standard should apply in inter partes review. The broadest reasonable construction standard helps ensure precision in drafting claims and prevents a patent from tying up too much knowledge; PTO has used the standard for more than 100 years.
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