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Cuozzo Speed Techs., LLC v. Lee - 136 S. Ct. 2131 (2016)

Rule:

The Leahy-Smith America Invents Act 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 the agency finds to be unpatentable in light of prior art. 35 U.S.C.S. §§ 102 and 103.

Facts:

Garmin International, Inc., and Garmin USA, Inc. sought inter partes review of all 20 claims of a patent held by petitioner Cuozzo, asserting, among other things, that claim 17 was obvious in light of three prior patents. The Patent Office agreed to review claim 17. It also decided to reexamine claims 10 and 14 on that same ground because it determined those claims to be logically linked to the obviousness challenge to claim 17. The Patent Office and canceled all three claims. Petitioner appealed to the circuit court, which ruled that the Patent Office’s regulation was a reasonable exercise of its rulemaking authority.

Issue:

Did the Patent Office improperly institute inter partes review to the prejudice of petitioner?

Answer:

Yes.

Conclusion:

The court ruled that the Patent Office within its authority under 35 U.S.C.S. § 316(a)(4) when it adopted 37 C.F.R. § 42.100(b), which provided that during inter partes review, a patent claim would be given its broadest reasonable construction in light of the specification of the patent in which it appeared. The court held that the petitioner did not have the right under 35 U.S.C.S. § 314(d) to appeal the PTO's decision to initiate inter partes review because a competitor's challenge consisted of questions closely tied to the application and interpretation of statutes that were related to the PTO's decision and did not implicate a constitutional question or present other questions that reached well beyond the scope and impact of § 314.

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