Cuozzo Speed Technologies, LLC v. Lee (579 U.S. 261)

U.S. Supreme Court · decided June 20, 2016 · Supreme Court Database (Spaeth)

Citation
579 U.S. 261 · 136 S. Ct. 2131
Decided
June 20, 2016
Term
October Term 2015
Vote
6–2
Majority author
Justice Breyer
Issue area
Economic Activity
Disposition
Affirmed
Outcome
Petitioning party lost
Ideological direction
Liberal

Opinion excerpt

Justice BREYER delivered the opinion of the Court. The Leahy-Smith America Invents Act, 35 U.S.C. § 100 et seq., creates a process called "inter partes review." That review process allows a third party to ask the U.S. Patent and Trademark Office to reexamine the claims in an already-issued patent and to cancel any claim that the agency finds to be unpatentable in light of prior art. See § 102 (requiring "novel[ty]"); § 103 (disqualifying claims that are "obvious"). We consider two provisions of the Act. The first says: "No Appeal.-The determination by the Director [of the Patent Office] whether to institute an inter partes review under this section shall be final and non-appealable." § 314(d). Does this provision bar a court from considering whether the Patent Office wrongly "determin[ed] ... to institute an inter partes review," ibid., when it did so on grounds not specifically mentioned in a third party's review request? The second provision grants the Patent Office the authority to issue "regulations ... establishing and governing inter partes review under this chapter." § 316(a)(4). Does this provision authorize the Patent Office 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"? 37 CFR § 42.100(b) (2015).…

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