Cuozzo Speed Techs., LLC v. Lee, No. 15-446
The Supreme Court concluded that (i) 35 U.S.C. § 314(d) does not permit judicial review of the Patent Trial and Appeal Board’s (“Board”) institution decision in an inter partes review (“IPR”), and (ii) the United States Patent and Trademark Office’s (“USPTO”) regulation providing that claims are to be construed according to the broadest reasonable interpretation was entitled to Chevron deference. The case stems from an IPR that was instituted against Cuozzo’s patent relating to speedometers. Relevant here, the Board instituted IPR on a dependent claim, as requested by Garmin, but also instituted IPR on two claims from which those claims depend. Those two claims were not subject to Garmin’s petition. Ultimately, the Board found the claims unpatentable for obviousness. On appeal to the Federal Circuit, Cuozzo challenged the Board’s cancellation of claims that Garmin had not challenged in its petition, and further challenged the Board’s use of the broadest-reasonable interpretation standard in IPR proceedings. The Federal Circuit affirmed in all respects, and later denied rehearing en banc. The Supreme Court granted certiorari and affirmed. As for the first issue, the Supreme Court concluded that section 314(d) plainly precluded review of an institution decision, and Cuozzo’s challenge to the cancellation of the two claims that Garmin did not challenge in its petition was in essence nothing more than a challenge to the propriety of the Board’s original institution decision. The Supreme Court did not categorically preclude all review of the Board’s institution decisions and left open the possibility of judicial review if the Board, for example, denied a patentee due process or cancelled claims for indefiniteness under 35 U.S.C. § 112—a ground not available for IPR. As for the broadest-reasonable-interpretation standard, the Supreme Court concluded that the PTO’s regulation was entitled to Chevron deference, as the statute does not provide for a claim-construction standard, and the PTO’s regulation was a reasonable interpretation of a statute that is silent on the point. The Supreme Court found significant the fact that the PTO has employed the broadest-reasonable-interpretation standard in other proceedings, such as an initial examination of a patent application, as well as in reexamination proceedings. Accordingly, the Supreme Court affirmed the judgment of the Federal Circuit.