In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act ("AIA"), the Supreme Court ruled that the Patent and Trademark Office's positions on two of the law's provisions regarding inter partes review ("IPR") were correct. First, the Court held unanimously that the USPTO properly applied the "broadest reasonable interpretation" standard for claim construction for IPRs. Second, six members of the Court also agreed that the statute mandated that the decision to institute an IPR was not subject to judicial review. Justice Breyer authored the decision of the Court, with Justice Thomas authoring a concurring opinion to voice his continued displeasure with judicial deference to administrative agencies under Chevron USA Inc. v. Nat'l Defense Council, Inc. On the second question Justice Alito penned a dissent, which was joined by Justice Sotomayor. This post will discuss the Court's first holding regarding the standard of review for claim construction; a related post will discuss the unreviewability of the Office's decision to institute an IPR in the first place (found in Section II of the opinion).
Section I of Justice Breyer's opinion provides a detailed review of patent examination and reexamination procedures, up to an including IPRs under the AIA. This synopsis contains a highly simplified description of the invention (bordering on trivializing it) but then references an Appendix, which "offer[s] a less simplified (and more technical) description" of the invention.
Section III is directed to the claim construction standard used by the PTAB in deciding IPRs. Cuozzo argued that the Office did not have the legal authority to issue its regulations using the "broadest reasonable interpretation" (BRI) claim construction standard. But the Court found otherwise, that Congress gave the Office this authority is 35 U. S. C. §316(a)(4): "a provision that grants the Patent Office authority to issue 'regulations . . . establishing and governing inter partes review under this chapter'" -- just like the Federal Circuit. This conclusion was expressly based on the following rubrics from Chevron: where a statute is clear, the agency must follow the statute, but where a statute leaves a "gap" or is "ambigu[ous]," the Court will "typically interpret it as granting the agency leeway to enact rules that are reasonable in light of the text, nature, and purpose of the statute." Such a "gap" is found here, because "[n]o statutory provision unambiguously directs the agency to use one standard or the other." In addition, "the statute 'express[ly] . . . authoriz[es] [the Patent Office] to engage in the process of rulemaking' to address that gap" in the Court's opinion, citing United States v. Mead Corp., 533 U. S. 218, 229 (2001).
The opinion addresses the dissent at the Federal Circuit: that the Office has authority only to issue procedural rules under §2(b)(2)(A), citing Cooper Technologies Co. v. Dudas, 536 F. 3d 1330, 1335 (Fed. Cir. 2008). But the Court believes § 316 expressly gives the Office rulemaking authority that authorizes using the BRI standard. In interpreting these two parts of...
