Cuozzo Speed Technologies v. Lee

PETITIONER: Cuozzo Speed Technologies, LLC
RESPONDENT: Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office
LOCATION: United States Court of Appeals for the Federal Circuit

DOCKET NO.: 15-446
DECIDED BY: Roberts Court (2016- )
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 579 US (2016)
GRANTED: Jan 15, 2016
ARGUED: Apr 25, 2016
DECIDED: Jun 20, 2016

ADVOCATES:
Curtis E. Gannon - Assistant to the Solicitor General, for the respondent
Garrard R. Beeney - for the petitioner

Facts of the case

Cuozzo Speed Technologies, LLC. (Cuozzo) owns the 074 patent, “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit,” and Garmin International, Inc. (Garmin) petitioned the Patent Trial and Appeal Board (Board) for inter partes review of claims regarding the patent. The Board was established to process patent litigation faster by using inter partes review, and during that process, the Board uses the broadest reasonable interpretation when reviewing patent claims instead of the plain and ordinary meaning of patent claims. The Board found that claims 10, 14, and 17 were unpatentable. Cuozzo filed a motion to amend by replacing claims 10, 14, and 17 with claims 21, 22, and 23. The Board denied this request by applying the broadest reasonable interpretation standard to the term “integrally attached” regarding claim 14 on the components of the “Speed Limit Indicator.” Cuozzo appealed to the U.S. Court of Appeals for the Federal Circuit, which held that it lacked authority to review the Board’s finding under the broadest reasonable interpretation.

Question

  1. May the Patent Trial and Appeal Board apply the broadest reasonable interpretation of patent claims during an inter partes review proceeding?
  2. Is the Patent Trial and Appeal Board’s use of inter partes review judicially reviewable?

Media for Cuozzo Speed Technologies v. Lee

Audio Transcription for Oral Argument - April 25, 2016 in Cuozzo Speed Technologies v. Lee

Audio Transcription for Opinion Announcement - June 20, 2016 in Cuozzo Speed Technologies v. Lee

John G. Roberts, Jr.:

Justice Breyer has our opinion in case 15-446, Cuozzo Speed Technologies versus Lee.

Stephen G. Breyer:

This is a patent case.

The case raises two questions concerning the interpretation of the Leahy-Smith America Invents Act.

Now that law changed the system the Patent offices uses, when the Patent office decides should we cancel a patent that we issued previously on the ground that we didn't understand then though we understand now that this proposed invention is obvious in light of prior art.

There is always been a system to do that but this is a new system to do that.

The invention at issue is designed to allow a driver to look at the speedometer of the car and quickly realize whether he or she is exceeding the speed limit.

It takes advantage of the fact that a white speedometer needle looks red when you put it under a piece of red cellophane or red plastic or red translucent material and so what this invention does as it takes a translucent piece of red plastic and it puts it in speedometer and it's on a rotating disk and connects the disk to the cars GPS system and it also connects it to say a chip or some kind of thing like that, that has information about speed limits on every road in the nation.

So when you're driving the GPS system tells you where the car is, the chip tells you where the speed limit is at that place and then the red disk rotates to that point on the speedometer say 65 miles an hour and when the needle goes underneath and it looks red.

Now the patent office actually gave the inventor a patent but a firm called Garmin asked the patent office to reconsider the decision and the patent office did so and it held after on the reconsideration, these are its words that anybody who is not an automaton would have been able to figure out that, how to make this invention in light of the prior art and because it was obvious your office canceled the claims at issue here.

The patent office appealed to the Federal Circuit.

The circuit affirmed patent office's decision and along the way it decided by a divided vote the two legal questions that we agreed to review.

The first legal question concerns the patent office's decision to begin this new review proceeding, remember it had done that at the firm called Garmin's request.

The Federal Circuit held that although we, a court, can review the lawfulness of the final result and here it was canceling the patent, we cannot review the office's initial decision to begin review.

Was this circuit right about that?

We think, though by a divided vote, we think it was right.

That is so in large measure because the access that “the determination” by the patent office “whether to institute an inter partes review under this section shall be final and non appealable.

This language along with the statute purpose means there is no appeal from the decision to institute the proceeding at least not in an ordinary case as this case is.

We reserve judgment about how the statutory provision would apply in a less ordinary case, say a case it raises a constitutional question or statutory question that has broad implications beyond what the provision refers to as this section.

The second question where we are unanimous concerns the validity of a patent office regulation that says that the office when conducting its review will construe a patent claim according to the “broadest reasonable construction" of its words not as a court would do, construe the claim according to the ordinary meaning of its words.

Like the Federal Circuit we conclude that the patent office did have the legal authority to promulgate this somewhat technical regulation.

The statute grants the patent office authority to issue “regulations, establishing and governing inter partes review.”

The regulation at issue does govern inter partes review.

No statutory provision forbids the patent office to issue this kind of regulation.

To the contrary the statutes leave a gap indeed a rather large gap for the agency to fill and as we explain in our opinion the agency has filled the gap in a reasonable way.

Following the approach we set forth Chevron versus NRDC which we have followed many, many times before, we believe that these features, a statutory gap filled in a reasonable way mean that the regulation is lawful.

We explain these matters further in our opinion.

Justice Thomas has filed a concurring opinion.

Justice Alito has filed an opinion concurring in part and dissenting in part which Justice Sotomayor joins.