CLIENT PUBLICATION
Intellectual Property Litigation | 21 June 2016
Supreme Court Affirms “Broadest Reasonable
Construction” Standard in IPR, but Leaves Questions on
Scope of Judicial Review
On June 20, 2016, the US Supreme Court released its much-anticipated decision in Cuozzo
Speed Technologies, LLC v. Lee, the first Supreme Court case to pass upon the post-grant
patent review procedures created by the Leahy-Smith America Invents Act (“AIA”). Ruling
against the patent owner, the Court approved of a rule by which the US Patent & Trademark
Office (“Office”) interprets patent claims as broadly as the patent will allow, making it easier for a
challenger in inter partes review (“IPR”) to prove that the claims are unpatentable. At the same
time, the Court upheld the statute barring judicial review of decisions to institute IPR, but left the
scope of this bar uncertain.
The AIA, enacted in 2011, significantly changed United States patent law. One major addition to patent law practice
was a brand new post-grant review proceeding called IPR—an adjudicatory procedure that became effective in
September 2012 in which any petitioner may challenge the claims of an issued patent as anticipated by or obvious
over patents or printed publications. IPR proceeds in two stages. First, a party wishing to challenge the patent files
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a petition in the Office, to which the patent owner may (but need not) respond. The Office then determines whether
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to institute an IPR. This initial institution decision is “final and nonappealable.” If instituted, the IPR proceeds to the
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merits phase, after which the Office will render a final decision. The AIA grants the Office broad authority to make
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rules governing the conduct of IPR. Pursuant to that authority, the Office has decreed that a patent claim “shall be
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given its broadest reasonable construction in light of the specification of the patent in which it appears.” This claim
interpretation standard has long been used by the Office during original prosecution of patent applications, as well
as in predecessor post-grant proceedings.
Cuozzo involved the first IPR to be instituted, and the first to reach a final decision. The underlying petition was filed
by Garmin International, Inc. (“Garmin,” who later settled), challenging numerous claims of US Patent
No. 6,778,074. In relevant part, Garmin challenged claim 10 and claim 14 (which depends from claim 10) using
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Id. § 314.
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Id. § 314(d).
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E.g., id. § 318.
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See id. § 316(a).
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