throbber
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
`
`

`
`
`
`
`
`

`
`
`
`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

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