Last week, Supreme Court rendered a decision regarding the inter partes review procedure.
Cuozzo Speed Technologies is the owner of a patent that covers a speedometer, indicating when the speed limit is exceeded. During the course of 2012, Cuozzo filed patent infringement lawsuits. Garmin was one of the defendants, which in return filed an inter partes review of the patent. This request aimed at invalidating the patent as obvious. PTAB, using the “broadest reasonable construction” standard, invalidated 3 different claims, even though only one of them was challenged.
In return, Cuozzo appealed before Court of Appeals for the Federal Circuit. The two main arguments were:
- PTAB decision was unlawful, since Garmin did not challenge the two other claims “with particularity” to which the challenged claim was dependent on.
- PTAB should have applied the Phillips standard in inter partes review, which is the standard used by federal courts. Phillips standard uses “ordinary meaning … as understood by a person skilled in the art”
The first argument was rejected in the light of 35 U.S.C. Section 314(d), which states that PTAB’s decision “whether to institute an inter partes review … shall be final and non-appealable.” Federal Circuit also rejected the second argument in the light of 35 U.S.C. Section 316(a), which grants the Patent Office the authority to issue “regulations … establishing and governing inter partes review”. By applying the BRC standard, more prior art will be taken into consideration.
Both issues were granted certiorari by the Supreme Court. For the first argument, the Court stated that PTAB decisions are generally not appealable; however, in cases where the decision implicates constitutional rights, judicial review may be available. For the issue regarding the standard of review, the Court unanimously held that the Patent Office has authority to implement the BRC standard.
This decision, along with Alice, Bilski, and Mayo, contributes to the ease of invalidating a patent.