TAKEAWAY: Claims under inter partes review, which mirrors reexamination, will continue to be given their broadest reasonable construction as during initial examination, and thus, inter partes review remains a more successful forum to invalidate a patent than challenging the patent in district court.
In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court, in its first time addressing inter partes review under the America Invents Act (AIA), affirmed the Federal Circuit’s decision to uphold the Patent Trial and Appeal Board’s cancellation of patent claims where the Board interpreted the claims under the broadest reasonable construction in light of the patent’s specification. This broadest reasonable construction, or broadest reasonable interpretation, standard mirrors the standard under which a patent examiner interprets a patent application’s claims, but differs from the ordinary meaning standard used by courts to interpret claims of an issued patent. Cuozzo, the patent holder, argued that because inter partes review was created to establish trial-like procedures for reviewing issued patents, the claims should be interpreted under the ordinary meaning standard as they would in a district court. However, the Court reasoned that the broadest reasonable construction standard in inter partes review is not unfair to a patent holder because the patent holder may amend the claims at least once in the review process, in addition to the opportunities to amend during prosecution of the application. The Court recognized that the different review standards may produce different outcomes in some situations, but stated that this structure is inherent in Congress’s regulatory design and that the patent system has provided different review options in the past as well. Therefore, applying the broadest reasonable construction standard in an inter partes review is a reasonable exercise of the Patent Office’s rulemaking authority to ensure that issued patents are kept within their legitimate scope.
This case also presented the issue of whether a patentee or a petitioner can appeal the Board’s decision on whether to institute inter partes review. The Court held that the AIA expressly states that the determination whether to institute inter partes review “shall be final and nonappealable,” so the presumption favoring judicial review is overcome because there are clear indications that Congress intended to bar review of a decision to institute inter partes review. Moreover, the Court emphasized that its decision is limited to situations where the grounds for attacking the Board’s decision are closely tied to the application and interpretation of statutes governing inter partes review. As such, the Court’s ruling does not preclude review of a final decision based on a due process or constitutional issue, nor does the ruling bar review of a Board decision that is outside the scope of the authority granted to the Board by statute.