Patent-Resolution Process Survives SCOTUS Review

     (CN) — The Supreme Court ruled Monday that the America Invents Act blocks an appeal of the U.S. Patent and Trademark Office’s decision to review patent claims.
     Cuozzo Speed Technologies faced a hearing before the Patent Trial and Appeal Board when Garmin International challenged Cuozzo’s patent for an interface that displays the vehicle’s current speed as well as the speed limit in the area.
     Cuozzo’s design involves determining the vehicle’s location as tracked by GPS, a technology made possible by Garmin.
     The Leahy-Smith America Invents Act subjects parties to a process known as inter partes review. The previous system, inter partes re-examination, had been less adversarial, allowing patent holders to liberally amend any claims they brought to overcome deficiencies.
     The process of inter partes review in the U.S. Patent and Trademark Office challenges the validity of the patent’s claims as anticipated or obvious.
     Garmin especially sought to invalidate claim 10 of Cuozzo’s patent, which describes a speed-limit indicator with a colored display to show drivers when they exceed the posted limit.
     The patent board concluded that Cuozzo’s claims were obvious, but its decision relied on grounds that Garmin did not identify in its original petition.
     Cuozzo petitioned the U.S. Supreme Court for review after the Federal Circuit affirmed 2-1 last summer. The high court heard arguments in the case in April after agreeing months earlier to take on the case.
     On Monday, the Supreme Court ruled 6-2 that Cuozzo’s challenge to the Patent Office’s decision to institute a review is barred by the America Invents Act.
     “The text of [the law] expressly states that the Patent Office’s determinations whether to institute inter partes review ‘shall be fi­nal and nonappealable.’ Moreover, construing [the law] to permit ju­dicial review of the Patent Office’s preliminary decision to institute inter partes review undercuts the important congressional objective of giving the agency significant power to revisit and revise earlier pa­tent grants,” Justice Stephen Breyer wrote for the majority. (Emphasis in original.)
     Upholding the Federal Circuit, the high court also found that the Patent Office’s rulemaking authority allows it to require the Patent Trial and Appeal Board to apply a broad standard of interpreting patent claim constructions.
     “Applying the broadest reasonable construction standard in inter partes review is not, as Cuozzo suggests, unfair to a patent holder, who may move to amend at least once in the review process, and who has had several opportunities to amend in the original application process,” Breyer wrote. “And though the application of one standard in inter partes review and an­other in district court proceedings may produce inconsistent out­comes, that structure is inherent to Congress’ regulatory design, and it is also consistent with past practice, as the patent system has long provided different tracks for the review and adjudication of patent claims.”
     Justice Samuel Alito filed a separate opinion concurring in part and dissenting in part, in which Justice Sonia Sotomayor joined.
     “Congress has given the Patent and Trademark Office considerable authority to review and cancel issued patent claims. At the same time, Congress has cabined that power by imposing significant conditions on the Patent Office’s institution of patent review proceedings. Unlike the Court, I do not think that Congress intended to shield the Patent Office’s compliance—or noncompliance—with these limits from all judicial scrutiny,” Alito wrote.
     He continued, “Rather, consistent with the strong presumption favoring judicial review, Congress required only that judicial review, including of issues bearing on the institution of patent review proceed­ings, be channeled through an appeal from the agency’s final decision. I respectfully dissent from the Court’s contrary holding.”

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