Cuozzo Speed Technologies, LLC v. Lee

Disclosure: Goldstein & Russell, P.C., whose attorneys contribute to this blog in various capacities, is among the counsel on an amicus brief by Intellectual Ventures Management, LLC., in support of the petitioners in this case.

Holding: The Leahy-Smith America Invents Act creates an agency procedure called “inter partes review” that allows a third party to ask the U.S. Patent and Trademark Office to re-examine the claims in an already-issued patent and to cancel any claim that the agency finds to be unpatentable in light of prior art; the act also provides that the PTO’s decision whether to institute an inter partes review is “final and unappealable.” This provision bars a court from considering whether the PTO was correct in instituting an inter partes review when it did so on grounds not specifically mentioned in a third party’s review request. Moreover, the PTO has authority to issue a regulation stating that the agency, in inter partes review, shall construe a patent claim according to its broadest reasonable construction in light of the specification of the patent in which it appears.

Judgment: Affirmed, 6-2, in an opinion by Justice Breyer on June 20, 2016. A unanimous Court joined the opinion with respect to Parts I and III, and Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, and Kagan joined the opinion of the Court with respect to Part II. Justice Thomas filed a concurring opinion. Justice Alito filed an opinion concurring in part and dissenting in part, in which Justice Sotomayor joined.