The US Supreme Court Upholds Federal Circuit’s Decision in Cuozzo

On June 20, 2016, the United States Supreme Court (the Court) issued its opinion in Cuozzo Speed Technologies, LLC v Lee (No. 15-446), addressing two key questions: (i) whether decisions by the Patent Trial and Appeal Board to institute inter partes review (IPR) proceedings are appealable; and (ii) whether the Board's use of the “broadest reasonable construction” is a proper standard for interpreting claims during such proceedings, rather than the "ordinary meaning" standard applied by district courts.

With respect to the first issue, the Court affirmed the Federal Circuit’s judgment, holding that the decision of the PTAB on whether to institute an IPR proceeding is not judicially reviewable unless it involves a constitutional question as to the institution decision. However, the Court pointed out that its ruling does not categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, nor does it enable the Patent Office to act outside its statutory limits by, for example, cancelling a patent claim for “indefiniteness under §112” in an IPR.

In addition, the Court further affirmed that the Patent Office has legal authority under 35 USC §316(a)(4) to issue its regulation requiring the agency, when conducting an IPR, to give a patent claim “its broadest reasonable construction in light of the specification of the patent in which it appears”. The Court rejected the patent owner’s argument that an IPR was a “judicial” proceeding that required the “plain and ordinary meaning” claim construction as required in litigation and noted that the IPR proceeding is less like a judicial proceeding and more like a specialized agency proceeding. The Court was of the view that the broadest reasonable interpretation construction “helps to protect the public” as it increases the possibility that the examiner will reject claims that are too broad or obvious.