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.

Reader Comments

Subscribe: RSS

View by: Time | Thread


  • identicon
    Anonymous Coward, 21 Jun 2016 @ 4:07pm

    Finally, Congress did something right. I Hope but am not convinced this is an upward trend.

    reply to this | link to this | view in chronology ]

    • icon
      John Fenderson (profile), 21 Jun 2016 @ 4:25pm

      Re:

      I think this was the Supreme Court, not Congress. And it seems to me that the SC rulings about patents over time has been pretty 50/50 (although I could be misremembering). So at least things aren't getting worse there.

      I'm pleased to see it, though.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 21 Jun 2016 @ 9:17pm

        Re: Re:

        Well, Congress passed the America Invents Act, and it included the language that both enabled this patent challenge in the first place, and did so in a way that made it actually useful.

        reply to this | link to this | view in chronology ]

  • identicon
    Zem, 21 Jun 2016 @ 7:40pm

    Your honor, with all due respect, the Supreme Court Ruling was "theoretical"....

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Jun 2016 @ 1:39pm

    To be clear, the PTO reviews ALL patents with this standard, not just crappy ones. So now the standard is different for validity than it is for infringement, which makes no sense. A patent's meaning should not be context-dependent.

    It is painfully obvious that the commenters here know dangerously little about patent law or the patent system, just that they don't like patents. In my experience, lots of tech folks think that IP is worthless until they have an idea that they think is worth protecting. . .

    In the meantime, great job doing the work of your new Asian overlords. The ideas that you are trying to commoditize are your own.

    Oh, and as an IP opponent itself, I suppose that TechDirt will not mind if I start lifting its articles and posting them on my competing website? All the words were already known and used previously. . .

    reply to this | link to this | view in chronology ]

    • icon
      John Fenderson (profile), 22 Jun 2016 @ 2:31pm

      Re:

      "It is painfully obvious that the commenters here know dangerously little about patent law or the patent system"

      People here might know more than you think, but it's hard to tell since you've not actually said what the errors are.

      "TechDirt will not mind if I start lifting its articles"

      Techdirt has repeatedly, over a period of years, overtly said they don't mind when people do this. And they walk that talk as well.

      reply to this | link to this | view in chronology ]

      • icon
        That One Guy (profile), 23 Jun 2016 @ 3:06am

        Re: Re:

        Techdirt has repeatedly, over a period of years, overtly said they don't mind when people do this. And they walk that talk as well.

        I always get a laugh when a commentor tries that particular trick. 'So you're anti-IP in all it's forms huh, well what if I post/use your stuff without permission? Bet you'd be in favor of all things IP then!'

        And then what they thought was a nice dig and/or attempt to expose a little bit of imaginary property-related hypocrisy is completely undercut when someone points out that nope, they can do that all they want and the TD people don't care.

        reply to this | link to this | view in chronology ]

        • icon
          John Fenderson (profile), 23 Jun 2016 @ 6:20pm

          Re: Re: Re:

          Yes. Not just with copyright, but with almost every other form of IP. "I bet you'd love the patent system if you had anything to patent", etc.

          I always wonder about the reasoning that leads to such statements, because they so often completely wrong. Take patents for example, I don't patent my own inventions because I don't see the value in doing so in my own situation. But I know a lot of people who have patents, and almost all of them think that the patent system is doing active damage to society as a whole.

          I suspect that it's another example of the strong tendency of people to think that their own viewpoint of something is automatically representative of the majority view.

          reply to this | link to this | view in chronology ]


Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Follow Techdirt
Techdirt Gear
Shop Now: I Invented Email
Advertisement
Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Advertisement
Report this ad  |  Hide Techdirt ads
Recent Stories
Advertisement
Report this ad  |  Hide Techdirt ads

Close

Email This

This feature is only available to registered users. Register or sign in to use it.