Court-Agency Allocations of Power and the Limits of Cuozzo

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

A Rose by Any Other Name – or – It’s not Wrong it’s just Different

To be clear, if the no-appeal statute's sole function is to block appeal of the reasonable-likelihood decision, then the decision is foreclosed in favor of the patentee (allowing appeal of the time-bar question).  However, as I suggested in a prior essay, I believe that Justice Gorsuch SAS opinion overstated Cuozzo's holding.

Cuozzo v. Lee: The Problem of Standing

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

Supreme Court Hears Appealability Appeal

18-916).   The focus of the case is statutory declaration that the PTO Director's decision of whether to institute an IPR is "final and nonappealable."  35 U.S.C. § 314(d).  This same issue - albeit slightly different context - was already addressed in Cuozzo Speed Techs., LLC v.

Supreme Court Patent Update: 271(e) Safe Harbor

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

Supreme Court Patent Report: End of 2015 Term

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

Pending Supreme Court Patent Cases 2016 (May 18 Update)

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.

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

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).

Pending Supreme Court Patent Cases 2016 (April 1 Update)

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

Shenanigans, Time Bars, and Federal Circuit Oversight

Broadcom Corp, the Federal Circuit held that applications of the one-year time bar for inter partes review are, indeed, subject to judicial review in light of the Supreme Court’s 2016 decision in Cuozzo Speed Techs.

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

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

Supreme Court grants Certiorari in Challenge of Inter Partes Review Proceedings

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

Pending Supreme Court Patent Cases 2016 (February 17 Update)

 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)

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

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

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.

Inter Partes Review: An Unconstitutional Delegation of Judical Power

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

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.

Traditional equitable defenses do not apply to IPR proceedings

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.

Federal Circuit on PTAB Initiation Decisions: Still No Appeal …

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.

A Walk in the Deference Labyrinth: Further Comment on Facebook v. Windy City

243, 258–59 (2006).   If the Chevron deference framework applies, the court is to defer to the agency’s interpretation of the statute if two further conditions are met: (1) the statute is ambiguous after all the traditional tools for statutory interpretation are brought to bear and (2) the agency’s interpretation is reasonable.  See, e.g., Cuozzo Speed Techs., LLC v.

Oil States Briefing: The Chancery-at-Law

 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.

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

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

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?

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)

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

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

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

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

Pending Cases at the Supreme Court

 These include Cuozzo & Pulse that I have previously discussed.

Federal Circuit Rejects Reduced-Deference for AIA-Trial Decisions

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:…

SAS Institute v. Iancu: Shifting IPR and Litigation Strategies

On a final issue, the PTO argued that the question before the court was effectively a challenge to the PTO petition decision -- something made expressly unappealable by the Patent Act §314(d).  "Even if the statute forbids his partial institution practice, the Director suggests we lack the power to say so."  However, the majority disagreed with the PTO Director -- holding that the case here involves "exactly the sort" of "shenanigans" that serve as exceptions to the Cuozzo rule.

Reviewing Partial-Institution Decisions

I'll note here that two major failings of this portion of the Federal Circuit's decision are (1) that the court offered no standard for its review of the PTAB's refusal to allow certain arguments; and (2) the court appears to basically be reviewing the partial institution decision -- but those are not reviewable under Cuozzo.

Strategic Decision Making in Dual PTAB and District Court Proceedings

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

 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

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.

Competing Questions in Supreme Court Petitions

For almost four decades, the United States Patent and Trademark Office (USPTO) has "possessed the authority to reexamine - and perhaps cancel - a patent claim that it had previously allowed." Cuozzo Speed Techs., LLC v.

Final and Nonappealable: construed as “may be reconsidered” and not reviewable in “at least some circumstances.”

In Cuozzo, the Supreme Court explained that an appeal focused on the likelihood of success element of institution would be barred by the provision.  Here, the majority identifies BioDelivery's appeal as "merely challenge the Board’s determination not to institute review, something the Board has discretion to do even upon a showing that there is a 'reasonable likelihood of success with respect to at least 1 claim challenged' in the petition."…

Patently-O Bits and Bytes by Juvan Bonni

Atty. David Boundy: Administrative Law Observations on Cuozzo Speed Technologies v.

Iowa Law Review Symposium guest post by Prof. Vishnubhakat: Managing the PTAB’s Legacy of Partial Institution

Under partial institution, these unmeritorious portions of a petition could easily be dispensed with at the institution stage.  No judicial review was available—not even after final judgment, under Cuozzo—so Chenery obligations did not even come into the picture.  This is not to say the obligations of reasoned decision-making should not apply to the Patent Office at the institution stage.  (Judge Reyna’s concurring opinion in Shaw Industries, for example, made a persuasive case that mere nonappealability does not legitimize black box decisions such as denying “redundant grounds” without explanation.  Still, the panel majority in that case did not reverse the agency.)…

PTAB: Tribal immunity does not apply to inter partes review proceedings.

However, the issues here appear to fall squarely within the exceptions noted by the Supreme Court in Cuozzo.

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

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

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

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

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

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

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

Supreme Court Patent Cases – September 28 Update

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

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

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

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

Event: Intellectual Property in the Supreme Court

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)

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

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