Supreme Court Says, Yes, The Patent Office Can Review Crappy Patents Using Broad Standards
from the good-news dept
Last week, the Supreme Court made life a little easier for patent trolls, and this week it made life a little harder. At issue was just how the Patent Office could review patents after they were granted. The last round of patent reform, the America Invents Act in 2010, included something called Inter Partes Review (IPR) that allows anyone to basically challenge a bad patent, presenting specific evidence that it shouldn’t have been granted due to prior art. A special board at the Patent Office, the Patent Trial and Appeal Board (PTAB), can then decide to review the patent if it decides that there’s a “reasonable likelihood” that it will invalidate some of the patent claims due to the submitted evidence.
In the case that went to the Supreme Court, Cuozzo Speed Technologies was upset that the PTAB knocked out some patent claims on a patent it held after Garmin filed an IPR effort with the Patent Office, claiming that one of the claims in a Cuozzo patent was invalid thanks to prior art. The PTAB knocked out three claims from the patent, saying that two other claims were equally impacted from the prior art. Cuozzo appealed to the Federal Circuit (CAFC) on two points: first it was upset that the PTAB reviewed three claims when Garmin really focused on just one. And, second, it was upset that the PTAB used “the broadest reasonable construction” of the claims rather than the “ordinary meaning as understood by a person of skill in the art.” CAFC sided with the PTAB, saying that the law says that you can’t appeal what PTAB chooses to review, and that the standard it used was perfectly reasonable.
In a rare instance of the Supreme Court not slapping down the CAFC’s ruling, it agreed with the appeals court.
Like the Court of Appeals, we believe that Cuozzo?s contention that the Patent Office unlawfully initiated its agency review is not appealable. For one thing, that is what §314(d) says. It states that the ?determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.? (Emphasis added.)
For another, the legal dispute at issue is an ordinary dispute about the application of certain relevant patent statutes concerning the Patent Office?s decision to institute inter partes review. Cuozzo points to a related statutory section, §312, which says that petitions must be pleaded ?with particularity.? Those words, in its view, mean that the petition should have specifically said that claims 10 and 14 are also obvious in light of this same prior art. Garmin?s petition, the Government replies, need not have mentioned claims 10 and 14 separately, for claims 10, 14, and 17 are all logically linked; the claims ?rise and fall together,? and a petition need not simply repeat the same argument expressly when it is so obviously implied…. In our view, the ?No Appeal? provision?s language must, at the least, forbid an appeal that attacks a ?determination . . . whether to institute? review by raising this kind of legal question and little more.
On the question of what standard to use in reviewing the claims, again the Supreme Court sides with CAFC and the Patent Office and against Cuozzo — once again pointing to the plain language of the law:
The statute, however, contains a provision that grants the Patent Office authority to issue ?regulations . . . establishing and governing inter partes review under this chapter.?… The Court of Appeals held that this statute gives the Patent Office the legal authority to issue its broadest reasonable construction regulation. We agree.
The court notes that the “ordinary meaning” to those “skilled in the art” standard is what’s used in court, but this is about the Patent Office re-examining the patent itself, at which point it gets to set the rules for what is patent eligible. And, further, it finds that the standard the PTAB uses is perfectly reasonable under its authority — in part because of the public’s “paramount interest in seeing that patent monopolies are kept within their legitimate scope.” That’s quoting a 1945 case, but it’s always nice to see the Supreme Court properly noting that a patent is a form of a monopoly.
To some extent, this ruling doesn’t change anything, as it is just accepting the standard that the Patent Office has been using for a few years now. So whatever whining and complaints you’ll see from patent trolls and their supporters is overblown. But this is a good ruling just in creating more certainty and clarity in the fact that the Patent Office can and should continue to use this process as it has been to reject overly broad patents.