Cuozzo Speed Techs., LLC v. Lee
June 20, 2016
Supreme Court No. 15-446, 579 U.S.
Author: Brendan O'Shea
In Cuozzo, the Supreme Court addressed two issues. First, the Court held questions related to patent law in inter partes reviews' Institution Decisions may not be reviewed on appeal, under 35 U.S.C. §314(d). Second, the Court unanimously upheld the Patent Office's decision to employ the broadest reasonable interpretation standard in construction of claims, under 37 C.F.R. §42.100(b), in inter partes reviews.
First, a majority of the Court found that the "No Appeal" provision, 35 U.S.C. §314(d), forbids ". . . appeals that attack. . . ordinary dispute[s] about the application of certain relevant patent statutes. . ." and interlocutory appeals. However, the Court would not extend the "No Appeal" provision to Constitutional questions, questions that go beyond or are unrelated to patent law, and situations where the PTAB, "acts outside its statutory limits." For instance, if the PTAB were to institute review under 35 U.S.C. §112, when it is statutorily limited to §§102 and 103, that decision would be appealable. In a dissenting opinion, Justice Alito, joined by Justice Sotomayor, argued that under Supreme Court precedent, §314(a)(4) should only bar interlocutory appeals.
Second, the Court found 35 U.S.C. §316(a)(4), which allows the Patent Office to issue rules governing inter partes reviews, to be ambiguous regarding claim construction standards. As such, under the Chevron Doctrine, the Patent Office has "leeway to enact rules that are reasonable in light of the text, nature, and purpose of the statute." The Court held the use of the broadest reasonable construction standard was reasonable and therefore within the Patent Office's rulemaking authority. In a concurring opinion, Justice Thomas argued that §316(a)(4) was an "express and clear conferral of authority to the Patent Office" and so there was no need to analyze this case under the Chevron Doctrine as it could be resolved by the Administrative Procedure Act, 5 U.S.C. §706(2)(A).