On June 20th, in Cuozzo v. Lee, the Supreme Court affirmed the Federal Circuit holding that claims should be given their broadest reasonable interpretation in inter partes review proceedings.
Two issues were before the Supreme Court:
- Whether the Federal Circuit had jurisdiction to consider the PTO’s decision to institute review and;
- Whether the Federal Circuit was correct in holding that in such proceedings claims should be given their broadest reasonable interpretation.
On the first issue, the majority opinion, authored by Justice Breyer noted that 35 USC 314 (d) states:
- The determination by the Director [of the Patent Office] whether to institute an inter partes review under this section shall be final and non-appealable.”
This being the case, he concluded that this provision:
- though it may not bar consideration of a constitutional question, for example, does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute inter partes review.
Justice Breyer that there was a “strong presumption” in favor of judicial review that we apply when we interpret statutes, including statutes that may limit or preclude review, but this presumption, could be overcome by “clear and convincing” indications, drawn from “specific language,” “specific legislative history,” and “inferences of intent drawn from the statutory scheme as a whole,” that Congress intended to bar review.
In the present case allowing judicial review:
- would undercut one important congressional objective, namely, giving the Patent Office significant power to revisit and revise earlier patent grants.
Justice Alito, with whom Justice Kagan agreed, dissented on this issue pointing out that the statute said that the decision by the Patent Office to institute inter partes review was “non-appealable”, not “non-reviewable” and that this language was not sufficient to overcome the presumption that decisions by agencies such as the PTO were subject to judicial review.
On the second question, the Supreme Court was unanimous that 35 USC 316(a)(4) which gives the PTO authority to issue:
- regulations . . . establishing and governing inter partes review under this chapter gave the PTO authority to make rules as to how claims were to be interpreted in matters that came before it. Consequently 37 CFR 42.100(b) which provides that in inter partes review, the PTAB shall [construe a patent claim according to] its broadest reasonable construction in light of the specification of the patent in which it appears was valid.
The Court rejected arguments that inter partes reviews were surrogates for court proceedings and so the “ordinary” rules for claim interpretation should apply because:
- Inter partes review is less like a judicial proceeding and more like a specialized agency proceeding. Parties that initiate the proceeding need not have a concrete stake in the outcome; indeed, they may lack constitutional standing. See §311(a); … challengers need not remain in the proceeding; rather, the Patent Office may continue to conduct aninter partes review even after the adverse party has settled …the Patent Office may intervene in a later judicial proceeding to defend its decision—even if the private challengers drop out …and the burden of proof in inter partes review is different than in the district courts: In inter partes review, the challenger (or the Patent Office) must establish unpatentability “by a preponderance of the evidence”; in district court, a challenger must prove invalidity by “clear and convincing evidence.”
The Court noted that:
- In addition to helping resolve concrete patent-related disputes among parties, inter partes review helps protect the public’s “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.
- use of the broadest reasonable construction standard [as increasing] the possibility that the examiner will find the claim too broad (and deny it), [so that] use of that standard encourages the applicant to draft narrowly. 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.