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Court-Agency Allocations of Power and the Limits of Cuozzo

patentlyo.com/patent/2017/05/agency-allocations-limits.html

How does the Supreme Court’s opinion last Term in Cuozzo Speed Techs., LLC v.

Cuozzo v. Lee: The Problem of Standing

patentlyo.com/patent/2016/03/cuozzo-problem-standing.html

The AIA-Trial claim construction issue is important and many of us would like to see the Supreme Court address it in Cuozzo.

Guest Post: Why Administrative Law Matters to Patent Attorneys—In re Cuozzo Speed Technologies LLC

patentlyo.com/patent/2015/02/administrative-attorneys-technologies.html

For example, last Wednesday, the Federal Circuit in In re Cuozzo Speed Technologies, LLC ruled that the court has no jurisdiction to review decisions by the Patent Trial and Appeal Board (PTAB) whether to institute an Inter Partes Review (IPR).

Cuozzo Amicus Briefs from IPO, AIPLA, BIO, et al., all arguing against Broadest Reasonable Interpretation of Claims During IPR proceedings

patentlyo.com/patent/2015/11/reasonable-interpretation-proceedings.html

Following a 6-5 split by the Federal Circuit, Cuozzo filed a petition for writ of certiorari – asking two important questions (as paraphrased by me):… See Cuozzo Takes IPR Challenge to the Supreme Court.

Supreme Court Patent Update: 271(e) Safe Harbor

patentlyo.com/patent/2016/06/supreme-update-harbor.html

Post Grant Admin: While we await Cuozzo, a set of follow-on cases continue to pile-up.

Pending Supreme Court Patent Cases 2016 (May 18 Update)

patentlyo.com/patent/2016/05/pending-supreme-court-patent-cases-update.html

That case involves the Flip-side of Cuozzo and asks whether an appeal can follow when the PTAB exceeds its authority by terminating an already instituted IPR proceeding?  The respondent (Steuben Foods) had previously waived its right to respond, but the Supreme Court has now requested a response.

Supreme Court Patent Report: End of 2015 Term

patentlyo.com/patent/2016/06/supreme-patent-report.html

Two Decisions: The Supreme Court has decided its two major patent cases - Halo/Stryker and Cuozzo.

Pending Supreme Court Patent Cases 2016 (April 1 Update)

patentlyo.com/patent/2016/04/pending-supreme-patent-april-update.html

No Standing for Cuozzo?: I wrote some about the standing and appellate jurisdiction issue in Cuozzo earlier this week.  [Link].

Supreme Court grants Certiorari in Challenge of Inter Partes Review Proceedings

patentlyo.com/patent/2016/01/certiorari-challenge-proceedings.html

The Supreme Court has granted writ of certiorari in the pending Inter Partes Review challenge of Cuozzo Speed Tech v.

En banc denial in Challenge to Versata-Review of CBM Decisions

patentlyo.com/patent/2017/04/challenge-versata-decisions.html

 The patent challenger asked the Federal Circuit to overturn Versata in light of the Supreme Court's decision in Cuozzo.

Pending Supreme Court Patent Cases 2016 (February 17 Update)

patentlyo.com/patent/2016/02/pending-supreme-february-update.html

 Cuozzo is perhaps a different story where I expect a divided court to affirm in a situation where Justice Scalia may have voted to reverse.

Pending Supreme Court Patent Cases 2016 (January 20 Update)

patentlyo.com/patent/2016/01/pending-supreme-january-update.html

This week, the Supreme Court granted certiorari in the administrative patent review case of Cuozzo v.

Federal Circuit on PTAB Initiation Decisions: Still No Appeal …

patentlyo.com/patent/2016/09/circuit-initiation-decisions.html

The Supreme Court extended the preclusion of judicial review to statutes related to the decision to institute; it did not limit the rule of preclusion to substantive patentability determinations made at the institution stage, as the facts of Cuozzo itself make clear.

Oil States Briefing: The Chancery-at-Law

patentlyo.com/patent/2017/08/states-briefing-chancery.html

 However, in the very recent Cuozzo decision, the Supreme Court held that in "significant respects, inter partes review is less like a judicial proceeding and more like a specialized agency proceeding."  An upcoming amicus would do well to address this point.

Traditional equitable defenses do not apply to IPR proceedings

patentlyo.com/patent/2016/09/traditional-equitable-proceedings.html

314(d) ("The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."); Although the Supreme Court in Cuozzo suggested that some appeals of institution decisions may be available.

Inter Partes Review: An Unconstitutional Delegation of Judical Power

patentlyo.com/patent/2016/01/unconstitutional-delegation-judical.html

This Court may thus hear the two cases together, the one raising smaller issues (Cuozzo) alongside the one raising larger issues (this case).

A First IPR Decision on the Merits

patentlyo.com/patent/2013/11/first-ipr-decision.html

Cuozzo Speed Tech, IPR2012-00001 (PTAB 2013)  Download Final decision-59 In its first full merits decision in an inter partes review case, the Patent Trial and Appeal Board (PTAB) has sided fully with the petitioner Garmin and ordered the three challenged claims cancelled.

Supreme Court Update: Are Secondary Indicia of Invention Relevant to Eligibility?

patentlyo.com/patent/2017/02/secondary-invention-eligibility.html

Apple, the patentee revives both Cuozzo and Markman claim construction arguments - this time focusing on "whether claim terms used to define the metes and bounds of an invention are generally given their “plain and ordinary meaning,” or are redefined (limited) to match the scope of the exemplary embodiments provided in the specification."… 15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)

Medtronic: On Rehearing the Court Restates that IPR Termination Decision is Not Appealable

patentlyo.com/patent/2016/10/medtronic-termination-appealable.html

Robert Bosch, the Federal Circuit panel has reaffirmed its earlier determining that the PTAB's vacatur of an IPR institution decision is a decision as to "whether to institute an inter partes review" and therefore is "final and nonappealable."  The original Medtronic decision had been released prior to Cuozzo v.

End of the Road for Ethicon’s Anti-Delegation Argument?

patentlyo.com/patent/2016/06/ethicons-delegation-argument.html

The decision in Cuozzo does not directly address the challenge issues here, but the court's loose language does suggest that it would side with the Federal Circuit.

Pending Supreme Court Patent Cases 2016 (January 12 Update)

patentlyo.com/patent/2016/01/pending-supreme-january.html

The important inter partes review case Cuozzo survived its first conference and is up on the blocks for a second round this week.

No Appeal for Errors in Instituting IPR

patentlyo.com/patent/2015/09/appeal-errors-instituting.html

We agree with Apple and the Patent and Trademark Office that Versata II is limited to the unique circumstances of CBMR and that, following Cuozzo, the Board's determination to initiate the IPRs in this case is not subject to review by this court under 35 U.S.C.

Oil States Energy Services v. Greene’s Energy Group

patentlyo.com/patent/2017/02/states-services-greenes.html

Whether the amendment process implemented by the PTO in interpartes review conflicts with this Court’s decision in Cuozzo Speed Technologies, LLC v.

Supreme Court denies Certiorari in Obviousness Case

patentlyo.com/patent/2016/05/supreme-certiorari-obviousness.html

 Although scheduled for conference, the court took no action in the Cuozzo follow-on case of Stephenson v.

Federal Circuit Rejects Reduced-Deference for AIA-Trial Decisions

patentlyo.com/patent/2016/04/circuit-deference-decisions.html

Judge O’Malley’s opinion appears to be designed to set-up Supreme Court review (if Cuozzo wins its case) or Congressional action.  She writes:…

Pending Cases at the Supreme Court

patentlyo.com/patent/2015/10/pending-supreme-court.html

 These include Cuozzo & Pulse that I have previously discussed.

Strategic Decision Making in Dual PTAB and District Court Proceedings

patentlyo.com/patent/2016/02/strategic-decision-proceedings.html

Second, notwithstanding that group, the vast majority of CBM and IPR petitions are filed by parties that are in all likelihood simultaneously litigating the patents in district court.  Given the substantial amount of overlap, and the potential for strategic behavior by accused infringers, the authors suggest that the same claim construction standard should be applied by both forums--a point with implications for Cuozzo Speed Technologies v.

Versata v. SAP: Federal Circuit Claims Broad Review of CBM Decisions

patentlyo.com/patent/2015/07/versata-federal-decisions.html

 In a concurring opinion, Judge Hughes wrote that "[t]he majority’s interpretation of § 324(e) to permit review of whether Versata’s patent is a 'covered business method patent' directly conflicts with our precedential decision in In re Cuozzo Speed Technologies, LLC, (Fed.

Patent Reform: Innovation Act of 2015

patentlyo.com/patent/2015/02/patent-reform-innovation.html

IPR Claim Construction: Rejecting the Federal Circuit's recent Cuozzo decision, the Bill would require the USPTO to construe claims in post-issuance reviews (IPR/PGR/CBM) in the same manner as would be done by a district court and "in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent."  And, if a court has already construed the claim then the PTO must "consider such claim construction."  This particular change is one that favors patentees.

Celgard: Important Challenge to the Federal Circuit’s Pervasive No-Opinion Judgments

patentlyo.com/patent/2017/06/important-challenge-pervasive.html

As in the Cuozzo case, the original IPR petitioner has dropped out of the case after a settlement, but the PTO is defending its own judgment.

IPR Petition Response => Claim Construction Disclaimer

patentlyo.com/patent/2017/05/petition-construction-disclaimer.html

An oddity of all of this is that the Federal Circuit appears quite concerned in this case about the linkages between claim construction during inter partes review and subsequent litigation, but previously ignored that issue during the prior cuozzo debate.

Supreme Court 2017 – Patent Preview

patentlyo.com/patent/2017/01/supreme-patent-preview.html

15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)…

Supreme Court Patent Cases: Post Sale Exhaustion

patentlyo.com/patent/2016/11/supreme-patent-exhaustion.html

15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)…

Supreme Court Update: Extending the ITC’s Reach Beyond US Borders

patentlyo.com/patent/2016/10/supreme-extending-borders.html

15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)…

First Amendment Finally Reaches Patent Law

patentlyo.com/patent/2016/10/amendment-finally-reaches.html

are kept within their legitimate scope.” Cuozzo Speed Techs., LLC v.

Supreme Court Patent Cases – September 28 Update

patentlyo.com/patent/2016/09/supreme-september-update.html

15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)…

Supreme Court Patent Cases: Malpractice, Obviousness, and Venue

patentlyo.com/patent/2016/09/supreme-malpractice-obviousness.html

15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)…

Supreme Court Patent Cases: Previewing the October Term 2016

patentlyo.com/patent/2016/09/supreme-previewing-october.html

15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)…

Supreme Court Calls for Views of the Solicitor General

patentlyo.com/patent/2016/06/supreme-solicitor-general.html

The no-change decision in Cuozzo was the biggest immediate patent law news from June 20, 2016.

Event: Intellectual Property in the Supreme Court

patentlyo.com/patent/2016/04/intellectual-property-supreme.html

Speakers include Garrard Beeny who is a partner at Sullivan & Cromwell and co-counsel for both Cuozzo and Stryker; and Matthew Hellman who is a partner at Jenner & Block and co-counsel for Wiley & Sons in Kirtsaeng.

USPTO Stadium Tours (PTAB/TTAB Hearings)

patentlyo.com/patent/2016/02/stadium-ptabttab-hearings.html

The review proceedings are now being challenged on a variety of procedural and constitutional grounds – with one case, Cuozzo v.

Patently-O Bits and Bytes

patentlyo.com/patent/2015/02/patently-bits-bytes.html

Doug  Nemec says "Cuozzo is a rubber stamp of the best possible kind."…