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Cuozzo Speed Techs., LLC v. Lee

Supreme Court of the United States

April 25, 2016, Argued; June 20, 2016, Decided

No. 15-446

Opinion

 [*2136]  [****1068]   Justice Breyer delivered the opinion of the Court.

] The Leahy-Smith America Invents Act, 35 U.S.C. §100 et seq., creates a process called “inter partes review.” That review process allows a third party to ask the U.S. Patent and Trademark Office to reexamine the claims in an already-issued patent and to cancel any claim that the agency finds to be unpatentable in light of prior art. See §102 (requiring “novel[ty]”); §103 (disqualifying claims that are “obvious”).

We consider two provisions of the Act. The first says:

“No Appeal.—The determination by the Director [***8]  [of the Patent Office] whether to institute an inter partes review under this section shall be final and non-appealable.” §314(d).

Does this provision bar a court from considering whether the Patent Office wrongly “determin[ed] . . . to institute an inter partes review,” ibid., when it did so on grounds not specifically mentioned in a third party’s review request?

The second provision grants the Patent Office the authority to issue

“regulations . . . establishing and governing inter partes review under this chapter.” §316(a)(4).

Does this provision authorize the Patent Office to issue a regulation stating that the agency, in inter partes review,

“shall [construe a patent claim according to] its broadest reasonable construction in light of the specification of the patent in which it appears”? 37 C.F.R. §42.100(b) (2015).

We conclude that the first provision, though it may not bar consideration  [**433]  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. We also conclude that the second provision authorizes the Patent Office to issue the regulation before us. See, e.g., United States v. Mead Corp., 533 U.S. 218, 229, 121 S. Ct. 2164, 150 L. Ed. 2d 292 (2001); Chevron U.S.A. Inc. v. NRDC, 467 U.S. 837, 842, 104 S. Ct. 2778, 81 L. Ed. 2d 694 (1984).

An inventor obtains a patent by applying [***9]  to the Patent Office. A patent examiner  [*2137]  with expertise in the relevant field reviews an applicant’s patent claims, considers the prior art, and determines whether each claim meets the applicable patent law requirements. See, e.g., 35 U.S.C. §§101, 102, 103, 112. Then, the examiner accepts a claim, or rejects it and explains why. See §132(a).

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136 S. Ct. 2131 *; 195 L. Ed. 2d 423 **; 2016 U.S. LEXIS 3927 ***; 119 U.S.P.Q.2D (BNA) 1065 ****; 84 U.S.L.W. 4438; 26 Fla. L. Weekly Fed. S 278

CUOZZO SPEED TECHNOLOGIES, LLC, Petitioner v. MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK OFFICE

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.

Prior History:  [***1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 2015 U.S. App. LEXIS 11714 (Fed. Cir., 2015)

Disposition: Affirmed.

CORE TERMS

Patent, inter partes, judicial review, reexamination, speed limit, proceedings, challenger, reasonable construction, broadest, regulation, nonappealable, Appeals, display, grounds, limits, post-grant, written decision, district court, cancel, speedometer, questions, courts, final decision, instituted, indicator, initiate, speed, red, decisions, Invents

Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Patent Law, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Administrative Law, Agency Rulemaking, Formal Rulemaking, Examinations, Office Actions, Judicial Review, Reviewability, Jurisdiction & Venue, Civil Procedure, Appeals, Appellate Jurisdiction, Governments, Legislation, Interpretation, Evidence, Burdens of Proof, Clear & Convincing Proof, Preponderance of Evidence, Examinations, Standards of Review