The Supreme Court’s level setting decisions regarding the America Invents Act
The America Invents Act created “inter partes review”, an agency procedure that allows any third party to request the U.S. Patent and Trademark Office to re-examine any claims in an already issued patent and possibly cancelling any claim that the agency then finds not to be patentable.
In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court held that 1) the America Invents Act barred judicial review of a reexamination decision made by the U.S. Patent and Trademark Office; 2) when conducting an inter parts review, to give a patent claim its broadest reasonable construction in light of the specification of the patent that it is a part of; and 3) that the delegation of such power to the U.S. Patent and Trademark Office was reasonable. Effectively, this means that anyone can raise a claim of inter parts review for any issued patent and the determination from that review cannot be appealed.
While one side of the argument is that allowing appeals could over-burden the U.S. Patent and Trademark Office with frivolous claims, the concern on the other side is that decisions with possibly significant impacts will be final with no opportunity for review.
Specifically, two provisions of the act were considered in the case:
- “No appeal. 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.” §314(d).
- “[R]egulations establishing and governing inter partes review under this chapter.” §316(a)(4).
And ultimately, The Supreme Court found that §314(d) of the Act “expressly states that the Patent Office’s determinations whether to institute inter parts review ‘shall be final and nonappealable’,” and that Congress had bestowed upon the Patent Office the authority to make such decisions.
Here, Cuozzo had acquired a patent in 2004 for a speedometer that indicated to the driver when they had exceeded the speed limit in a particular area. Challenging claim 17 of this patent, Garmin kicked off an assessment by the Patent Office to evaluate claims 10, 14, and 17 as the three were related to one another.
The Patent Office found that all three were obvious in light of previous patents that Garmin had pointed out to the Patent Office. Cuozzo appealed, and The Supreme Court granted certiorari. They pointed out that “the purpose of inter partes review is not only to resolve patent-related disputes among parties, but also to protect the public’s ‘paramount interest in seeing that patent monopolies… are kept within their legitimate scope’,” and that “the broadest reasonable construction standard helps ensure precision in drafting claims and prevents a patent from tying up too much knowledge, which, in turn, helps members of the public draw useful information from the disclosed invention and understand the lawful limits of the claim.”
The take away: inter partes review is final and cannot be reviewed without a constitutional concern and that the standard to be used in this review has been left by Congress up to the Patent Office who can elect to use the broadest reasonable construction standard which is within their authority.
This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.