No.
`
`
`
`In the Supreme Court of the United States
`——————
`CUOZZO SPEED TECHNOLOGIES, LLC, PETITIONER
`
`v.
`
`MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT
`AND TRADEMARK OFFICE
`——————
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`——————
`PETITION FOR A WRIT OF CERTIORARI
`——————
`
`JANET GALERIA
`SULLIVAN & CROMWELL LLP
`1888 Century Park East
`Los Angeles, CA 90067
`(310) 712-6600
`
`
`
`JEFFREY B. WALL
`Counsel of Record
`SULLIVAN & CROMWELL LLP
`1700 New York Avenue, N.W.
`Suite 700
`Washington, DC 20006
`(202) 956-7500
`wallj@sullcrom.com
`
`GARRARD R. BEENEY
`SULLIVAN & CROMWELL LLP
`125 Broad Street
`New York, NY 10004
`(212) 558-4000
`
`
`
`
`
`In the Supreme Court of the United States
`——————
`CUOZZO SPEED TECHNOLOGIES, LLC, PETITIONER
`
`v.
`
`MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT
`AND TRADEMARK OFFICE
`——————
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`——————
`PETITION FOR A WRIT OF CERTIORARI
`——————
`
`JANET GALERIA
`SULLIVAN & CROMWELL LLP
`1888 Century Park East
`Los Angeles, CA 90067
`(310) 712-6600
`
`
`
`JEFFREY B. WALL
`Counsel of Record
`SULLIVAN & CROMWELL LLP
`1700 New York Avenue, N.W.
`Suite 700
`Washington, DC 20006
`(202) 956-7500
`wallj@sullcrom.com
`
`GARRARD R. BEENEY
`SULLIVAN & CROMWELL LLP
`125 Broad Street
`New York, NY 10004
`(212) 558-4000
`
`
`
`
`
`
`
`
`
`
`
`QUESTIONS PRESENTED
`In 2011, Congress enacted the Leahy-Smith Amer-
`ica Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
`which established a new post-grant adjudicatory pro-
`cess for challenges to the validity of patents. The Act
`created a body within the Patent and Trademark Of-
`fice, called the Patent Trial and Appeal Board
`(Board), to hear those challenges as a quick and cost-
`effective alternative to litigation. One of the new
`types of adjudicative proceedings, inter partes review
`(IPR), has been both unexpectedly popular and sur-
`prisingly lethal. Since the inception of IPR, patent
`challengers have filed over 3,400 petitions, and nearly
`85% of the IPR proceedings to date have resulted in
`the cancellation of some or all claims in the patent un-
`der review.
`A primary reason for the high cancellation rate is
`that, although IPR was expressly designed to be a
`surrogate for litigation, the Board does not use the
`same claim construction standard as federal courts.
`Rather than construe the claim in an issued patent
`according to its plain and ordinary meaning, as a fed-
`eral court would be required to do, the Board gives
`the claim
`its broadest reasonable
`interpretation,
`which is a protocol used by examiners in reviewing
`patent applications. Of course, the broader the inter-
`pretation of the claim, the more extensive the array of
`relevant prior art—and in turn the more likely that
`the claim will be held invalid in light of that prior art.
`Consequently, the Board’s broad interpretation allows
`for differing determinations of validity in IPR pro-
`ceedings and litigation.
`
`(I)
`
`
`
`II
`
`Over a dissent by Judge Newman, a divided panel
`of the Federal Circuit affirmed the Board’s use of the
`broadest-reasonable-interpretation standard for claim
`construction. The panel majority also held that, even
`if the Board had exceeded its statutory authority in
`instituting an IPR proceeding in the first place, the
`Board’s decision to institute was judicially unreviewa-
`ble. The court of appeals denied rehearing by a vote
`of 6-5, over a joint dissent by Chief Judge Prost and
`Judges Newman, Moore, O’Malley, and Reyna, as well
`as a separate dissent by Judge Newman. The five
`dissenting judges addressed the merits of, and would
`have rejected, the Board’s claim construction stand-
`ard.
`The questions presented are as follows:
`1. Whether the court of appeals erred in holding
`that, in IPR proceedings, the Board may construe
`claims in an issued patent according to their broadest
`reasonable interpretation rather than their plain and
`ordinary meaning.
`2. Whether the court of appeals erred in holding
`that, even if the Board exceeds its statutory authority
`in instituting an IPR proceeding, the Board’s decision
`whether to institute an IPR proceeding is judicially
`unreviewable.
`
`
`
`
`
`
`
`PARTIES TO THE PROCEEDINGS
`Petitioner is Cuozzo Speed Technologies, LLC.
`Respondent is Michelle K. Lee, Under Secretary of
`Commerce for Intellectual Property and Director of
`the United States Patent and Trademark Office, who
`intervened in the court of appeals to defend the deci-
`sion of the Patent Trial and Appeal Board after Gar-
`min International, Inc. and Garmin USA, Inc. reached
`a settlement with petitioner and withdrew from the
`case. Pursuant to Rule 12.6 of this Court, petitioner
`believes that Garmin International, Inc. and Garmin
`USA, Inc. have no interest in the outcome of this peti-
`tion.
`
`(III)
`
`
`
`
`
`CORPORATE DISCLOSURE STATEMENT
`Petitioner Cuozzo Speed Technologies, LLC has no
`parent corporation, and no publicly held company
`owns 10 percent or more of its stock.
`
`
`
`(IV)
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Opinions below ..................................................................... 1
`
`Jurisdiction ........................................................................... 1
`
`Statutory and regulatory provisions involved .................. 1
`
`Statement .............................................................................. 2
`
`A. The America Invents Act .................................... 2
`
`B. Proceedings before the Board ............................ 6
`
`C. Proceedings before the Federal Circuit ............ 7
`
`Reasons for granting the petition .................................... 13
`
`I. The decision below presents issues of
`exceptional importance. .......................................... 14
`
`A. Whether the Board applies the right claim
`construction standard is critical to the
`proper operation of the AIA and the patent
`system. ................................................................. 14
`
`B. Whether the Board may freely exceed its
`statutory authority in instituting IPR is
`likewise critical to the proper operation of
`the AIA and the patent system. ....................... 19
`
`II. The decision below is incorrect. ............................. 23
`
`A. The panel majority erred in holding that
`the Board may give patent claims their
`broadest reasonable interpretation, rather
`than their ordinary meaning. ............................ 23
`
`
`
`(V)
`
`
`
`VI
`
`1. The broadest-reasonable-
`interpretation protocol is an
`examination expedient justified by
`the applicant’s liberal right to amend
`claims. ............................................................. 23
`
`2. Congress established an adjudicative
`proceeding with no right to amend. ............ 25
`
`3. The PTO’s regulation is invalid. ................... 27
`
`B. The panel majority erred in holding that,
`even if the Board exceeds its statutory
`authority in instituting IPR, the Board’s
`unlawful action is unreviewable. ....................... 28
`
`III. This case is an ideal vehicle to resolve the
`divisions in the Federal Circuit. ............................ 32
`
`Conclusion ........................................................................... 34
`
`Appendix A: Court of appeals amended opinion
`(July 8, 2015) ................................................................. 1a
`
`Appendix B: Court of appeals order denying re-
`hearing (July 8, 2015) ..................................................48a
`
`Appendix C: Court of appeals opinions respecting
`the denial of rehearing (July 8, 2015) ........................50a
`
`Appendix D: Court of appeals original opinion
`(Feb. 4, 2015) ................................................................68a
`
`Appendix E: Final written decision of the Patent
`Trial and Appeal Board (Nov. 13, 2013) .................. 109a
`
`Appendix F: Decision of the Patent Trial and Ap-
`peal Board to initiate trial for inter partes review
`(Jan. 9, 2013) ............................................................... 168a
`
`Appendix G: Relevant statutory and regulatory
`provisions .................................................................... 199a
`
`
`
`
`
`VII
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases:
`Achates Reference Publ’g, Inc. v. Apple Inc.,
`No. 2014-1767, 2015 WL 5711943
`(Fed. Cir. Sept. 30, 2015) ............................ 21, 22, 23
`Bowen v. Mich. Acad. of Family Physicians,
`476 U.S. 667 (1986) .................................................. 30
`Burlington Indus., Inc. v. Quigg,
`822 F.2d 1581 (Fed. Cir. 1987) ............................... 24
`Cmty. for Creative Non-Violence v. Reid,
`490 U.S. 730 (1989) .................................................. 11
`Commil USA, LLC v. Cisco Sys., Inc.,
`135 S. Ct. 1920 (2015) .............................................. 14
`Cooper Techs. Co. v. Dudas,
`536 F.3d 1330 (Fed. Cir. 2008) ............................... 27
`Google Inc. v. Jongerius Panoramic Techs., LLC,
`IPR2013-00191, Paper No. 50 (Feb. 13, 2014) ...... 26
`Highmark Inc. v. Allcare Health Mgmt. Sys., Inc.,
`134 S. Ct. 1744 (2014) .............................................. 14
`In re Papst Licensing Digital Camera
`Patent Litig.,
`778 F.3d 1255 (Fed. Cir. 2015) ............................... 15
`In re Prater,
`415 F.2d 1393 (C.C.P.A. 1969) .......................... 24, 25
`In re Rambus, Inc.,
`753 F.3d 1253 (Fed. Cir. 2014) ............................... 25
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ......................... 23, 24
`
`
`
`
`
`VIII
`
`Cases—Continued:
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ............................... 24
`Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ......................... 14, 15
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ............................... 19
`Leedom v. Kyne,
`358 U.S. 184 (1958) .................................................. 31
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ............................................ 14, 18
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................... passim
`SmithKline Diagnostics, Inc. v. Helena
`Labs. Corp.,
`859 F.2d 878 (Fed. Cir. 1988) ................................. 19
`Soc. Sec. Bd. v. Nierotko,
`327 U.S. 358 (1946) .................................................. 31
`St. Jude Med., Cardiology Div., Inc. v.
`Volcano Corp.,
`749 F.3d 1373 (Fed. Cir. 2014) ............................... 29
`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) ................................................ 15
`Versata Dev. Grp., Inc. v. SAP Am., Inc.,
`793 F.3d 1306 (Fed. Cir. 2015) ............. 21, 22, 23, 31
`Statutes and regulations:
`19 U.S.C. 1337 ............................................................... 19
`28 U.S.C. 1254(1) ............................................................. 1
`America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284 (2011) ............................................... passim
`§ 18(a)-(d), 125 Stat. at 329-331 .............................. 20
`
`
`
`
`
`IX
`
`Statutes and regulations:
`Patent Act, 35 U.S.C. 1 et seq.:
`35 U.S.C. 6(c) ............................................................. 5
`35 U.S.C. 103 .............................................................. 6
`35 U.S.C. 112(b) ....................................................... 14
`35 U.S.C. 141(c)........................................ 6, 14, 30, 31
`35 U.S.C. 311-319 ............................................ passim
`35 U.S.C. 321-329 ............................................... 20, 21
`37 C.F.R.:
`42.51 ............................................................................ 4
`42.70 ............................................................................ 5
`42.100(b) ............................................................... 9, 27
`42.108 .......................................................................... 4
`42.120 .......................................................................... 4
`42.121(a) ................................................................ 5, 27
`Miscellaneous:
`H.R. Rep. No. 112–98, pt. 1 (2011) .................... 3, 16, 26
`Innovation Act, H.R. 9, 114th Cong.
`§ 9(b)(2015) ............................................................... 33
`Patent Act, S. 1137, 114th Cong.
`§ 11(a)(4)(A)(vii) (2015) ........................................... 33
`STRONG Patents Act of 2015, S. 632, 114th
`Cong. § 102(a) (2015) ............................................... 33
`77 Fed. Reg. 48,724 (Aug. 14, 2012) ............................ 16
`80 Fed. Reg. 50,722 (Aug. 20, 2015) ............................ 25
`Brief in Opposition, Highmark Inc. v. Allcare
`Health Mgmt. Sys. Inc.,
`134 S. Ct. 1744 (2014) (No. 12-1163) ...................... 33
`Brief in Opposition, Metro-Goldwyn-Mayer
`Studios Inc. v. Grokster, Ltd.,
`545 U.S. 913 (2005) (No. 04-480) ............................ 33
`
`
`
`
`
`X
`
`Miscellaneous—Continued:
`Brief in Opposition, Microsoft Corp. v.
`i4 Ltd. P’ship,
`131 S. Ct. 2238 (2011) (No. 10-290) ........................ 33
`Gregory Dolin, Dubious Patent Reform,
`56 B.C. L. Rev. 881 (2015) ...................................... 17
`Experts Unsure of Path Patent Reform
`Legislation Will Take, Commc’ns Daily,
`Sept. 8, 2015 ............................................................. 33
`Neil C. Jones, The Five Most Publicized Patent
`Issues Today, Bus. L. Today (May 2014) ............. 17
`Aashish Kapadia, Inter Partes Review: A New
`Paradigm in Patent Litigation, 23 Tex.
`Intell. Prop. L. J. 113 (2015) ................................... 17
`Mark A. Lemley & Bhaven Sampat, Is the
`Patent Office a Rubber Stamp?, 58 Emory
`L.J. 181, 181 (2008) .................................................... 2
`Peter S. Menell, Matthew D. Powers & Steven
`C. Carlson, Patent Claim Construction: A
`Modern Synthesis and Structured
`Framework, 25 Berkeley Tech. L.J. 711
`(2010) ......................................................................... 15
`Paul R. Michel, Why Rush Patent Reform?,
`7 Landslide 49 (2015)......................................... 16, 17
`Petition for Rehearing En Banc, Versata Dev.
`Grp., Inc. v. SAP Am., Inc.,
`793 F.3d 1306 (Fed. Cir. 2015)
`(No. 2014-1194) .................................................. 20, 22
`U.S. Patent and Trademark Office, Manual of
`Patent Examining Procedure
`(9th ed., Mar. 2014) ............................................ 24, 25
`
`
`
`
`
`XI
`
`Miscellaneous—Continued:
`U.S. Patent and Trademark Office, Patent Trial
`and Appeal Board Statistics 8/31/2015,
`http://www.uspto.gov/sites/default/files/docum
`ents/2015-08-31%20PTAB.pdf ................................. 16
`
`
`
`
`
`
`
`
`
`PETITION FOR A WRIT OF CERTIORARI
`——————
`Petitioner Cuozzo Speed Technologies, LLC re-
`spectfully petitions for a writ of certiorari to review
`the judgment of the United States Court of Appeals
`for the Federal Circuit in this case.
`
`OPINIONS BELOW
`The amended opinion of the court of appeals on re-
`hearing (App., infra, 1a-47a) is reported at 793 F.3d
`1268. The opinions respecting the court’s denial of
`rehearing en banc (App., infra, 50a-67a) are reported
`at 793 F.3d 1297. The original opinion of the court of
`appeals (App., infra, 68a-108a) is reported at 778 F.3d
`1271. The final decision of the Patent Trial and Ap-
`peal Board (App., infra, 109a-167a) is reported at 108
`U.S.P.Q.2d 1852. The decision of the Patent and
`Trademark Office to initiate trial for inter partes re-
`view (App., infra, 168a-198a) is not reported but is
`available at 2013 WL 5947691.
`
`JURISDICTION
`The court of appeals entered its original judgment
`on February 4, 2015. The court issued an amended
`opinion, and denied the petition for rehearing (App.,
`infra, 48a-49a), on July 8, 2015. The jurisdiction of
`this Court is invoked under 28 U.S.C. 1254(1).
`
`STATUTORY AND REGULATORY
`PROVISIONS INVOLVED
`The relevant statutory and regulatory provisions
`are reproduced in the appendix to this petition. App.,
`infra, 199a-223a.
`
`(1)
`
`
`
`2
`
`STATEMENT
`A. The America Invents Act
`1. In the early 2000s, several commentators criti-
`cized the Patent and Trademark Office (PTO) for issu-
`ing too many patents that were unlikely to be found
`valid upon review. See, e.g., Mark A. Lemley &
`Bhaven Sampat, Is the Patent Office a Rubber
`Stamp?, 58 Emory L.J. 181, 181 (2008) (“A growing
`chorus of voices is sounding a common refrain: the
`U.S. Patent and Trademark Office (PTO) is issuing
`far too many bad patents.”). Congress became in-
`creasingly concerned that the existence and continued
`issuance of bad patents were creating uncertainty in
`the marketplace and impeding innovation. See App.,
`infra, 32a-33a (Newman, J., dissenting).
`Parties also lacked a reasonably efficient way to
`challenge a patent’s validity. A challenger could sub-
`mit a request for inter partes reexamination to the
`PTO, and a patent examiner would then decide
`whether to initiate a reexamination proceeding. Such
`proceedings were relatively infrequent, however, be-
`cause patent owners could amend and strengthen
`their claims, challengers were limited in any subse-
`quent litigation, and the reexaminations themselves
`could be costly and time-consuming. See App., infra,
`54a (joint dissent of Prost, C.J., and Newman, Moore,
`O’Malley, Reyna, JJ.). Challengers instead typically
`brought or responded to litigation, but that also could
`be expensive and slow. Ibid.; id. at 32a-33a (Newman,
`J., dissenting).
`To address those issues, after six years of hearings
`and collaboration with a wide range of stakeholders,
`Congress enacted the Leahy-Smith America Invents
`Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (2011),
`
`
`
`
`
`3
`
`with the goal of improving the quality of patents and
`reducing unnecessary litigation costs. See H.R. Rep.
`No. 112-98, pt. 1, at 39-40 (2011). The cornerstone of
`the Act is its creation of a new type of adversarial
`proceeding before the PTO to decide patent validity.
`The new adjudicatory proceeding—called inter partes
`review or IPR—is meant to “provide a reliable early
`decision, by technology-trained patent-savvy adjudi-
`cators, with economies of time and cost.” App., infra,
`33a (Newman, J., dissenting).
`The AIA replaced the former system of inter
`partes reexamination with this new adversarial pro-
`ceeding. See H.R. Rep. No. 112–98, at 46-47 (“The
`Act converts inter partes reexamination from an ex-
`aminational to an adjudicative proceeding, and re-
`names the proceeding ‘inter partes review.’”). The
`AIA also formed a new body within the PTO, the Pa-
`tent Trial and Appeal Board, to hear the challenges to
`patent validity. Congress’s goal was to create “a
`completely new type of PTO proceeding,” App., infra,
`54a (joint dissent)—specifically, an “adversarial evi-
`dentiary proceeding in the PTO” that could “reliably
`resolve most issues of patent validity, without the ex-
`pense and delay of district court litigation, and some-
`times even before infringement has occurred,” id. at
`32a (Newman, J., dissenting).
`2. Under the new IPR system, a person other
`than the patentee initiates a challenge to the validity
`of an existing patent by filing a petition with the PTO.
`See 35 U.S.C. 311(a). The petitioner may challenge
`patent claims “only on a ground that could be raised
`under [S]ection 102 [novelty] or 103 [obviousness] and
`only on the basis of prior art consisting of patents or
`printed publications.” 35 U.S.C. 311(b). The petition
`must identify with particularity “the grounds on
`
`
`
`
`
`4
`
`which the challenge to each claim is based, and the
`evidence that supports the grounds for the challenge
`to each claim.” 35 U.S.C. 312(a)(3). The patentee
`then has “the right to file a preliminary response to
`the petition * * * that sets forth reasons why no in-
`ter partes review should be instituted based upon the
`failure of the petition to meet any requirement of this
`chapter.” 35 U.S.C. 313.
`Within three months after the patentee’s prelimi-
`nary response is due, the Director of the PTO must
`decide whether to grant the petition and institute
`IPR. 35 U.S.C. 314(b).1 Congress authorized the Di-
`rector to institute IPR only upon “determin[ing] that
`the information presented in the petition * * * and
`any response * * * shows that there is a reasonable
`likelihood that the petitioner would prevail with re-
`spect to at least 1 of the claims challenged in the peti-
`tion.” 35 U.S.C. 314(a). The Director’s decision
`whether to institute an IPR proceeding is “final and
`nonappealable.” 35 U.S.C. 314(d).
`If the Director decides to institute IPR, the case
`proceeds to discovery and trial. The patentee is per-
`mitted certain discovery of relevant evidence, includ-
`ing depositions of the petitioner’s declarants. See
`35 U.S.C. 316(a)(5); 37 C.F.R. 42.51. The patentee
`may also file a response to the petition, along with any
`supporting affidavits or declarations. See 35 U.S.C.
`316(a)(8); 37 C.F.R. 42.120. If the patentee files a re-
`sponse, the petitioner is permitted certain discovery
`of relevant evidence, including depositions of the pa-
`tentee’s declarants, and may file a reply.
` See
`35 U.S.C. 316(a)(5), (13); 37 C.F.R. 42.51. The trial is
`
`1 The PTO’s Director has delegated this responsibility to the Pa-
`tent Trial and Appeal Board. See 37 C.F.R. 42.108.
`
`
`
`
`
`5
`
`then conducted by a panel of at least three adminis-
`trative patent judges. See 35 U.S.C. 6(c), 316(c). Ei-
`ther
`party may
`request
`an
`oral
`hearing.
`See 35 U.S.C. 316(a)(10); 37 C.F.R. 42.70.
`Unlike the former system of inter partes reexami-
`nation, inter partes review is not an examinational
`process. Patent examiners play no role, and the
`Board is not authorized to perform an examinational
`review, such as searching the prior art or formulating
`grounds of rejection. Rather, the IPR process is
`strictly adversarial and adjudicatory. In addition, un-
`like the liberal right to amend claims and iterative
`back-and-forth between patent owner and examiner in
`inter partes reexamination, IPR allows the patentee
`to make a single motion to amend, after conferring
`with the Board. See 35 U.S.C. 316(d)(1); 37 C.F.R.
`42.121(a). The motion is presumptively limited to
`substituting one amended claim for one challenged
`claim, and the motion may be denied if the amend-
`ment “does not respond to a ground of unpatentability
`involved in the trial” or “seeks to enlarge the scope of
`the claims of the patent or introduce new subject mat-
`ter.” 37 C.F.R. 42.121(a).
`Following the parties’ evidentiary presentations
`and trial before the three-judge panel, the Board
`must “issue a final written decision with respect to the
`patentability of any patent claim challenged by the
`petitioner and any new claim added” by amendment.
`35 U.S.C. 318(a). The entire IPR, including the
`Board’s final decision, must be completed on a swift
`timeline: within one year from the date of institution,
`absent an extension for good cause. 35 U.S.C.
`316(a)(11). Any party to the IPR “who is dissatisfied
`with the final written decision of the Patent Trial and
`Appeal Board * * * may appeal the Board’s decision
`
`
`
`
`
`6
`
`only to the United States Court of Appeals for the
`Federal Circuit.” 35 U.S.C. 141(c).
`B. Proceedings Before The Board
`1. Petitioner Cuozzo Speed Technologies, LLC
`(Cuozzo) owns a patent on an invention that alerts
`drivers when they are speeding. The invention inte-
`grates a GPS unit and an in-vehicle display to provide
`a visual indication to the driver when he is exceeding
`the speed limit at the vehicle’s present location.
`Cuozzo’s patent claims thus cover “a speedometer in-
`tegrally attached to [a] colored display.” App., infra,
`3a. Among other things, the invention eliminates the
`need for drivers to take their eyes off the road to look
`for speed limit signs.
`On September 16, 2012—the date that the new sys-
`tem of inter partes review became available—Garmin
`International, Inc. and Garmin USA, Inc. (collectively,
`Garmin) filed an IPR petition challenging, inter alia,
`claims 10, 14, and 17 of the Cuozzo patent. The Board
`denied all of the grounds for unpatentability alleged
`by Garmin with respect to claims 10 and 14, but it ap-
`plied to those claims prior art cited by Garmin with
`respect to claim 17. App., infra, 188a, 192a-193a. The
`Board then instituted IPR for all three claims, deter-
`mining there was a reasonable likelihood that all of
`the claims were obvious based on prior art. Id. at
`196a-197a.
`2. In November 2013, after briefing, discovery,
`and the submission of evidence, the Board issued a
`final written decision invalidating claims 10, 14, and
`17 as obvious under 35 U.S.C. 103. App., infra,
`109a-167a. The Board explained that “[a]n appropri-
`ate construction of the [claim] term ‘integrally at-
`tached’ * * * is central to the patentability analy-
`
`
`
`
`
`7
`
`sis.” Id. at 116a. Rejecting Cuozzo’s construction of
`the ordinary meaning of the claim term “integrally
`attached,” the Board gave the term its “broadest rea-
`sonable construction.” Id. at 117a-120a. Using that
`construction, the Board found that claims 10, 14, and
`17 were obvious based on prior art. Id. at 166a.
`Cuozzo appealed to the Federal Circuit, and although
`Cuozzo and Garmin reached a settlement, the PTO
`intervened to defend the Board’s decision.
`C. Proceedings Before The Federal Circuit
`1. Over a vigorous dissent by Judge Newman, the
`panel majority affirmed the Board’s decision in its en-
`tirety. App., infra, 1a-47a.2
`a. The panel majority first held that the Board’s
`decision to institute IPR was judicially unreviewable.
`App., infra, 7a. The panel majority acknowledged
`Cuozzo’s argument that, for claims 10 and 14, “the
`PTO relied on prior art that Garmin did not identify
`in its petition as grounds for IPR as to those two
`claims.” Id. at 6a. The panel majority also acknowl-
`edged that any petition for IPR must identify with
`particularity “the grounds on which the challenge to
`each claim is based, and the evidence that supports
`the grounds for the challenge to each claim.”
`35 U.S.C. 312(a)(3); App., infra, 6a. The PTO may in-
`stitute IPR only if “the Director determines that the
`information presented in the petition . . . and any re-
`sponse . . . shows that there is a reasonable likelihood
`that the petitioner would prevail.” Ibid. (quoting
`35 U.S.C. 314(a)).
`
`2 On rehearing, the panel majority and Judge Newman withdrew
`their original opinions, see App., infra, 68a-108a, and issued amend-
`ed opinions with substantial revisions, see id. at 1a-47a. This peti-
`tion refers to those amended opinions.
`
`
`
`
`
`8
`
`The panel majority nevertheless held that judicial
`review was barred by the AIA, which provides that
`“[t]he determination by the Director whether to insti-
`tute an inter partes review under this section shall be
`final and nonappealable.” 35 U.S.C. 314(d). In the
`panel majority’s view, Section 314(d) bars review even
`if, despite the statute’s terms, the Director institutes
`IPR based on grounds and evidence that are not iden-
`tified with particularity in the petition. The panel ma-
`jority thus concluded that Section 314(d) “exclude[s]
`all review” of an institution decision, regardless of
`whether the challenge is to the appropriateness of the
`Director’s exercise of his statutory authority or is in-
`stead to the Director’s exceeding that authority.
`App., infra, 7a.
`b. Turning to the merits, the panel majority held
`that the Board had permissibly adopted the broadest-
`reasonable-interpretation standard for claim con-
`struction. App., infra, 11a-21a. The panel majority
`observed that “the broadest reasonable interpretation
`standard has been applied by the PTO and its prede-
`cessor for more than 100 years in various types of
`PTO proceedings.” Id. at 13a. Based on that history,
`the panel majority concluded that when Congress
`created the new system of inter partes review, it “im-
`pliedly approved the existing rule” in IPR, notwith-
`standing Congress’s intent to replace inter partes
`reexamination with IPR adjudication and the substan-
`tial differences between IPR and other types of PTO
`proceedings. Id. at 15a.
`In the alternative, the panel majority held that
`even if Congress had not intended claims to be given
`their broadest reasonable interpretation, the PTO’s
`regulation adopting that standard in IPR is a valid
`exercise of the agency’s rulemaking authority and en-
`
`
`
`
`
`9
`
`titled to Chevron deference. App., infra, 18a-21a; see
`37 C.F.R. 42.100(b). According to the panel majority,
`although the PTO does not have the “power to inter-
`pret substantive statutory ‘patentability’ standards,”
`it has the authority to “embod[y] in a regulation the
`approach it has uniformly applied, even without rule-
`making, when it is interpreting ‘claims’ to assess pa-
`tentability.” Id. at 20a.
`c. Judge Newman dissented. App., infra, 30a-
`47a. In her view, “[t]he America Invents Act plainly
`contemplated that the new PTO tribunal would de-
`termine [the] validity of issued patents on the legally
`and factually correct claim construction, not on a hy-
`pothetical ‘broadest’ expedient as is used in examina-
`tion of proposed claims in pending applications.” Id.
`at 34a. Congress expressly created IPR, Judge
`Newman explained, to serve as an adjudicative “sur-
`rogate for district court litigation of patent validity,”
`and it therefore is inconsistent with both the AIA and
`the sensible development of patent law to have differ-
`ent claim construction standards for agency and court
`proceedings. Id. at 30a-31a. Judge Newman further
`explained that the PTO lacks substantive rulemaking
`authority, but in any event she would not have de-
`ferred to the PTO regulation because it defeats Con-
`gress’s purpose of “substituting administrative adju-
`dication for district court adjudication.” Id. at 45a.
`With respect to the Board’s decision to institute
`IPR, Judge Newman noted that the Board had ex-
`ceeded its statutory authority and acted at odds with
`the plain terms of the AIA. She observed that the
`Board’s institution decision “relies on arguments and
`evidence that had not been raised in the Petition to
`Institute, although the statute requires that all argu-
`ments and evidence must be presented in the Peti-
`
`
`
`
`
`10
`
`tion.” App., infra, 31a. Criticizing the panel majori-
`ty’s “casual disregard of this statutory provision” and
`citing the presumption in favor of reviewability of
`agency action, Judge Newman concluded that Section
`314(d) was intended to “control interlocutory delay
`and harassing filings” and does not preclude judicial
`review “of whether the statute was applied in accord-
`ance with its legislated scope.” Id. at 31a, 46a.
`2. Cuozzo filed a petition for rehearing en banc
`supported by numerous amici recognized as leaders in
`the field of intellectual property, including the Intel-
`lectual Property Owners Association, New York Intel-
`lectual Property Law Association, Pharmaceutical
`Research and Manufacturers of America, and some of
`America’s
`leading
`inventive corporations (among
`them 3M, Caterpillar, Eli Lilly, General Electric,
`GlaxoSmithKline, Johnson & Johnson, Pfizer, Procter
`& Gamble, and Sanofi). Over a joint dissent by Chief
`Judge Prost and Judges Newman, Moore, O’Malley,
`and Reyna, as well as a separate dissent by Judge
`Newman, the court of appeals denied the petition for
`rehearing en banc by a vote of 6-5. In addition to urg-
`ing rehearing, the dissenting judges would have re-
`jected the Board’s use of the broadest-reasonable-
`interpretation standard.
`a. Judge Dyk (who authored the panel majority’s
`decision),
`joined by Judges Lourie, Chen, and
`Hughes, concurred in the denial of rehearing. App.,
`infra, 51a-52a. The concurrence reiterated the panel
`majority’s reasoning that “[t]he PTO has applied the
`broadest reasonable interpretation standard in a vari-
`ety of proceedings for more than a century,” and
`“[n]othing in the [AIA] indicates congressional intent
`to change” that standard. Id. at 51a.
`
`
`
`
`
`11
`
`b. Chief Judge Prost and Judges Newman,
`Moore, O’Malley, and Reyna jointly dissented from
`the denial of rehearing. App., infra, 52a-61a. The
`joint dissent began by taking issue with the conclusion
`that Congress had “implicitly approved” the broadest-
`reasonable-interpretation standard. Id. at 53a (quot-
`ing id. at 18a). Observing the usual rule that “Con-
`gress’ silence is just that—silence,” id. at 53a (quoting
`Cmty. for Creative Non-Violence v. Reid, 490 U.S.
`730, 749 (1989)), the joint dissent explained that the
`AIA created “a wholly novel procedure” and Con-
`gress’s “[s]ilence has no meaning in this context.” Id.
`at 54a. To the contrary, Congress wanted a “court-
`like proceeding” as “a far-reaching surrogate for dis-
`trict court validity determinations,” ibid. (internal
`quotation marks omitted), and “[t]he panel majority
`fails to explain
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
