Supreme Court accepts Cuozzo Speed Technologies IPR appeal

By Gene Quinn
January 15, 2016

scotus-supreme-court-angle-335On Friday the United States Supreme Court added several cases to its docket for this term. One of those cases is Cuozzo Speed Technologies v. Lee, a case that will require the Supreme Court to address two critically important questions associated with inter partes review (IPR) proceedings. First, is it appropriate for the United States Patent and Trademark Office to use a different claim constructions standard than is used in federal district court. Second, are institution decisions insulated from judicial review.

The specific questions presented in the Cuozzo Speed Technologies certiorari petition were as follows:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

In accepting the case the Supreme Court merely wrote: “The petitions for writs of certiorari are granted.” Thus, the Court has accepted both questions.




Cuozzo Speed Technologies (“Cuozzo”) is the owner of U.S. Patent No. 6,778,074, which relates to a speed limit indicator and method for displaying speed and the relevant speed limit. On September 16, 2012, Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (USPTO), requesting institution of an IPR with respect to claims 10, 14, and 17 of the ’074 patent.

Ultimately, the Patent Trial and Appeal Board (PTAB) of the USPTO issued a final decision finding claims 10, 14, and 17 were obvious. The Board additionally denied Cuozzo’s motion to amend the ’074 patent by substituting new claims 21, 22, and 23 for claims 10, 14, and 17.  The Board rejected the amendment because (1) substitute claim 21 lacked written description support as required by 35 U.S.C. § 112, and (2) the substitute claims would improperly enlarge the scope of the claims as construed by the Board.

On appeal to the Federal Circuit Cuozzo primarily raised several issues. First, Cuozzo argued that the IPR was improperly instituted by the USPTO because with respect to claims 10 and 14 the basis for granting the petition to institute the IPR was certain prior art not raised by the petitioner. Second, Cuozzo argued that the PTAB applied the incorrect standard when evaluating the scope of the claim.

Whether the USPTO properly instituted the IPR relative to claims 10 and 14 is a matter of great importance for several reasons: (1) pursuant to 35 U.S.C. 312(a)(3), a complete IPR petition requires that petitioner identify with particularity “the grounds on which the challenge to each claim is based,” and (2) 35 U.S.C. 314(d) provides that a USPTO decision to institute an IPR is not appealable. Previously, in St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., the Federal Circuit ruled that 314(d) made it impossible for the Federal Circuit review a USPTO denial to institute an IPR proceeding. The decision in this case, however, extended that ruling and holds that the Federal Circuit is without authority to review the propriety of the institution of an IPR even after the conclusion of an IPR proceeding. Thus, the USPTO has unreviewable discretion to do whatever they want with respect to instituting IPRs, even in situations where petitions are clearly defective on their face.

Writing for the panel majority, Judge Dyk, who was joined by Judge Clevenger, explained that regardless of whether the USPTO properly should have instituted an IPR, the decision of the USPTO could not be reviewed or challenged even after a completed IPR proceeding. Dye wrote:

Contrary to Cuozzo’s contention, we hold that we lack jurisdiction to review the PTO’s decision to institute IPR… We conclude that § 314(d) prohibits review of the decision to institute IPR even after a final decision. On its face, the provision is not directed to precluding review only before a final decision. It is written to exclude all review of the decision whether to institute review.

Another issue raised by Cuozzo related to whether the PTAB should, when construing a claim in IPR, rely on the traditionally applied standard applied to review of applications, namely the “broadest reasonable interpretation” standard, or whether the more narrow standard applied by the district courts should be utilized. Not surprisingly, Judge Dyk found that the broadest reasonable interpretation standard is appropriate. He wrote:

There is no indication that the AIA was designed to change the claim construction standard that the PTO has applied for more than 100 years… Congress in enacting the AIA was well aware that the broadest reasonable interpretation standard was the prevailing rule. It can therefore be inferred that Congress impliedly adopted the existing rule of adopting the broadest reasonable construction.

Judge Newman participated in the decision and filed a dissent. The dissent is not a scathing indictment of the majority, but Newman does in a matter of fact manner explain that the majority is wrong. Newman makes a compelling argument with respect to the broadest reasonable interpretation standard, saying that by applying that standard to IPRs the Court if fundamentally dishonoring the intent of the statute in creating post grant review procedures.

Newman explained that the AIA created IPRs in order to provide a lower cost, quicker alternative for defendants to challenge the validity of patent claims. In order for IPR to operate as a surrogate to the more time consuming and costly patent litigation that occurs in district courts the PTAB must apply the same standard as used in the district courts. She explained:

This purpose was achieved by providing a new adjudicatory proceeding in the administrative agency, the Patent and Trademark Office in the Department of Commerce, whereby a newly formed Patent Trial and Appeal Board (PTAB) serves as a surrogate for district court litigation of patent validity…

[T]he panel majority authorizes and requires treating the claims of an issued patent in the same way as pending claims in the patent application stage, where claims are subject to the “broadest reasonable interpretation” examination protocol. The panel majority thus precludes achieving review of patent validity in Inter Partes Review comparable to that of the district courts, where validity is determined based on the correct claim construction, not an artificially “broadest” construction…

Ultimately, Judge Newman concluded that it is impossible for the USPTO to “serve as a surrogate for district court litigation if the PTAB does not apply the same law to the same evidence.”

Judge Newman was equally troubled by the fact that the panel majority has rendered the Federal Circuit incapable of reviewing USPTO decisions to institute IPR proceedings, which would effectively insulate the Office from any review and thereby allow the Office to disregard the statute, which they seem to have clearly done here with respect to claims 10 and 14. Newman asked: “Does this mean that such decisions can never be judicially reviewed, even if contrary to law, even if material to the final appealed judgment?” In answering her own question she wrote: “This ruling appears to impede full judicial review of the PTAB’s final decision…”

Newman would have interpreted 314(d) as preventing interlocutory appeals, not final reviews of a completed proceeding. She pointed out that preventing appellate review of an interlocutory appeal is routine, while preventing all judicial review is extraordinary and improper.


While 314(d) does clearly say that the decision to institute a review is not appealable, interpreting that to mean that no court could everreview the decision as part of its review of a final decision effectively means that an agency decision to institute a process to strip away vested property right is immune from review by an Article III court. This is particularly troublesome given that the property right at issue here is of Constitutional importance given that patents are specifically mentioned and authorized in the Constitution itself, not a document known for its length or specificity.

Even if Congress intended to forever insulate initiation decisions from judicial review, such an intention would seem to clearly violate at least the spirit of the bedrock Constitutional principles that ensure checks and balances between and among co-equal branches of government. If Congress could do this here with patent rights then why couldn’t Congress prevent judicial review of decisions relating to real property? The interpretation of Judges Dyk and Clevenger is unprincipled, not bounded and fundamentally dangerous.

Similarly, it is impossible to ignore the fact that Congress wanted to provide an alternative to district court patent litigation with respect to reviewing validity of issued patents. If the post grant procedures of the AIA are an alternative to litigation logic demands that the same rules of interpreting claims that apply at the district court level apply to these alternative administrative proceedings.

With respect to claim construction, time and time again throughout the legislative history of the AIA post grant proceedings were explained as being a faster, low-cost alternative to litigating validity disputes in Federal District Court. See Patent Abuse of Genius. That being the case, it would seem extremely odd that district court alternative to challenging the validity of an already issued patent would use a lower standard with which to construe the patent and offer no presumption of validity.

If the challenge to validity were to take place in the federal district court the patent would be presumed valid and the Philips standard would be applied, which would narrowly construe the claims. Instead, the PTAB provides no presumption of validity and uses the broadest reasonable interpretation of the claims, both of which make it much easier to invalidate the claim in question.

Simply stated, use of BRI and providing no presumption strips the already issued patent of key protections the patent, a property right, would enjoy in federal district court. Why? Disparate treatment in what was supposed to be a district court alternative is impossible to justify in any fair way. The only way the USPTO justifies this disparate treatment is to say that is how they have always done things. That it has always been done wrong it hardly a justification for continuing to do it wrong moving forward.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 15 Comments comments.

  1. EG January 16, 2016 11:36 am

    Hey Gene,

    Cuozzo Speed is the biggest patent case now on the SCOTUS docket. Newman and the other dissenters are right on these issues, or else IPRs, as viewed by the Federal Circuit majority, have essentially nullified the safeguards of “due process” provided by the Fifth Amendment. How can a final decision by the PTAB be unreviewable as to whether: (1) the IPR rules are compliant with the AIA?; and (2) the final determination by the PTAB is compliant with IPR rules, as promulgate? Also, I wonder if the APA issues I noted in my article on Cuozzo Speed last July will surface as well? Time will tell.

  2. Anon January 17, 2016 9:51 am

    Nice point on the APA EG.

    An open question to you, Gene and others: if Congress decides after the APA to create new rules not in line with the APA, are the new rules inherently defective, or is it a case that the new rules simply exist outside of the APA? Presuming for the moment that these new rules were properly legislated.

    I ask because the issue that seems to underlie the case here (without being front and center) is whether or not Congress acted properly (as opposed to either the PTAB acting according to the (new) guidelines created by Congress, or any dicta (which is not the holding of the case, as is errant in the question accepted by the Supreme Court) purporting to provide an advisory opinion as to a different state of IPR initiation.

    I would also point out another “silent” point here is that the underlying “silent” issue does seem to separate the initiation decision from any following decision on the merits. I do think that this separation is critical to recognize and appreciate, since it is the decision to initiate that is not reviewable, and it is the decision to initiate that changes the nature of the property that will be reviewed (e.g., loss of the C&C standard, application of BRI).

    This noting of separate steps (initiation versus any decision on the final mertis) was advanced as critical to the understanding of the issue of an improper taking way back when the IPR was still being considered, and was one thing that I shared with my Congressmen during deliberation of the AIA.

    If indeed it is Congress that acted improperly in how the IPR was set up (absolute discretion to an executive agency with no review by the judicial branch, which results in a taking of certain granted property rights without due process or any recompense), what are the available remedies?

    This last question is asked because, again, there appears to be a certain “see no evil” eyes-clenched-tight aspect to this particular law called the AIA.

    No one appears to want to even talk about what happens if this taking of property rights at the initiation is deemed unconstitutional.

    Under normal circumstances (i.e., possible for other laws, but not here), the courts have the ability to employ a type of “line item veto.” I say “not here,” because for this law, that ability to have separability was expressly contemplated by Congress, and it is abundantly clear from the legislative record that such an option was expressly rejected.

    This takes away all options of the court that would effectively produce the same end result of separability.

    I have studied the branch to branch interactions of our form of government, and the delicacy of the checks and balances that apply to all three branches. As I understand those checks and balances, the Court here, upon a finding (if that were to happen) that the IPR system, set up by Congress, is indeed unconstitutional, the rejection of the separability clause by Congress leaves only one option to the Court: repudiation of the entire AIA.

    The cynical side of me thinks this system-wide fail mode was a deliberate action on multiple accounts.

    First, the size of the fail was meant to dissuade any attempt to find any portion as “improper.” This has been called the “Chaebol effect.” However, too big to fail does not – and should not – be allowed to rule the day, because in the end, all law must satisfy our constitutional constraints, no matter how big or convoluted that law may be.

    Second, it should be clear that massive amounts of money exchanged hands in the long years that the AIA was crafted. A “restart” and blowing up of the AIA does mean that the “till” is open again, and special interests will once again be invited to “$peak their mind$” as it were and ‘help’ fill the coffers of Congress.

    Some wish to dismiss this inquisition as to what remedy is available by classifying the topic as a “sky is falling” or an “impossible wish” geared only to the elimination of the AIA by those who just don’t like the AIA.

    That of course is just poppycock.

    I am fully on record (as are you) as not liking the AIA. But one of the reasons I do not like the AIA is that it is just “bad” law, poorly constructed and deeply flawed. That I would welcome the demise of the AIA has NO effect on the merit of the legal questions that I put forth. Those that would shun the questions based solely on the ad hominem of “but you don’t like the AIA” or similar nonsense, avoid the issue which is now present (at least as a foundation issue) at the Supreme Court.

    Clarity of this issue NOW is indeed proper. Hiding the ramifications, or worse, another blurring of the proper checks and balances by the Court, is definitely NOT in the interests of the legal system.

  3. Anon January 17, 2016 10:49 am

    I am reminded of an historical analogy to the “too big to fail” conundrum of large complex laws purposefully crafted to be all or nothing endeavors.

    The Gordian Knot.

    The historical answer, provided by Alexander the Great:

    Cut the knot.

    Does cutting wreck the rope?


    But as the Gordian Knot analogy implies, anything less than cutting the knot only makes things worse.

  4. EG January 17, 2016 5:20 pm

    “An open question to you, Gene and others: if Congress decides after the APA to create new rules not in line with the APA, are the new rules inherently defective, or is it a case that the new rules simply exist outside of the APA?”


    If I understand David Boundy correctly, Congress didn’t explicitly except the APA from the AIA, and that includes IPRs. That means the APA applies, including requirement that the agency decision (e.g., PTAB) must not be “arbitrary, capricious, an abuse of discretion, and not in accordance with law.” Also, as noted in my July 2015 article, the promulgation of IPR rules is also subject to the including compliance with the Regulatory Flexibility Act (RFA) and the Paperwork Reduction Act (PRA). The word from David Boundy is that the IPR rules were promulgated without complying with either the RFA or the PRA, making those rules fatally defective, as happened with both the claim-continuation rules and the appeal rules. Now whether the Royal Nine will acknowledge such fatal defectiveness is another mater

  5. Anon January 18, 2016 9:11 am


    Thank you for fleshing out the frailty of my stated “Presuming for the moment that these new rules were properly legislated.

    I would tend to agree that an explicit statement would be required for any subsequent legislation (law from Congress, no less than rules from an administrative agency) to “suspend” the APA (as well as the other Acts that you mention). Which does draw to mind that it is doubtful – at the rules level – whether an administrative agency (ANY administrative agency) has the power to set aside such Acts. Clearly, as the eminent Mr. Boundy has time and again demonstrated, the Patent Office does not have that level of authority.

    And while I wanted to explore any possible remedy in order to explicate a deeper problem with the AIA itself, what first may fall (and the Court may limit its finding only to this effect) might just be the rules that flow from the law, leaving to another day the (eventual?) overturning of the Chaebol-like AIA.

    However, I think that such judicial cowardice (if I may be so bold to label the abdication of duty of the judicial branch if they attempt to avoid the deeper issue, which would remain even if the rules were thrown out), would only be another setback for the proper roles of the tripartite government.

    By the way, I largely agree with your article (and for ease of reference, the article is located here: ).

  6. EG January 18, 2016 10:20 am

    Hey Anon,

    Thanks for your additional response, and especially providing the link to my article from last year on the Cuozzo Speed en banc denial. Some of the issues I raised in that article (others like “eminent Boundy” have raised the as well) may not be squarely included the two questions proposed by Cuozzo Speed.

    But I harken to what Seth Waxman adroitly did in keeping alive the 271(a) direct infringement issue (can direct infringement occur when there is more than one actor involved?) in Akamai when the focus at the SCOTUS level was primarily on the 271(b) indirect infringement issue. By keeping that 271(a) direct infringement issue in play, Waxman at least elicited a comment by SCOTUS in the Akamai decision that the Federal Circuit could address that issue if they so chose which the Federal Circuit did, ruling (surprisingly in my view) 10-0 in in favor of direct infringement under 271(a) not being confined to a single actor. The grant of Cuozzo Speed’s petition gives us a similar opportunity to alert SCOTUS to the other 9/10’s of the IPR “iceberg” lurking beneath these AIA waters. Put it this way: we having nothing to lose by pointing out the other “problems” with IPRs, as enacted, and as implemented by the USPTO.

  7. Anon January 19, 2016 8:26 am

    Preaching to the choir, EG (but thank you for proving an example of someone keeping the light shining on an item so that jurisprudence can be made a bit more intelligently).

    Your iceberg analogy is apt in several ways – it’s a shame that the notion of “too big to fail” blocked the inclusion of the separability amendment in this particular law (the AIA), but as I mentioned, the AIA is deeply, deeply flawed in many places and the shear size should not be viewed as an impediment to “getting things right.”

    And “getting things right” implicates many things, from actually being constitutionally sound, to strengthening rather than weakening patent rights, to focusing on the right problems, such as controlling those things that the Office can control: examination, for example.

    These are things I shared with my Congressmen during the AIA process. Alas, one man’s voice was lost in the sea$ of large corporate “voices” that have seemingly overwhelmed (and captured) the legislative process. But that’s a problem (Citizen’s United) that is not limited to patent law.

  8. Robert January 19, 2016 3:28 pm

    This is certainly a case of something growing something mighty spawned from nothing. Cuozzo never should have issued. The record shows this patent issued with essentially no prior art searching done. If the low hanging fruit prior art uncovered by Garmin, in their validity search, had been in front of the examiner there would not be a constitutional issue at hand today….at least not derived from this case.

  9. Eric Berend January 20, 2016 2:39 am

    @8, Robert: I was hoping that their patent claims would have been more soundly established than that. Of course, isn’t a reasonably thorough prior art search considered to be ‘de rigeur’ as normal patent prosecution practice?

    As has been observed many times, flawed cases advanced as exemplars before the SCOTUS, often make for flawed (and unfortunately, powerfully binding) decisions.

  10. EG January 20, 2016 8:08 am

    Robert and Eric,

    You may well be right that the “facts” in Cuozzo Speed are flawed, but the issues raised about the propriety of IPRs, and whether the PTAB decisions in them are compliant with “due process” and the APA are not, as was readily pointed out by the dissenters. We have to take this case, even with its potential factual flaws, as it is. SCOTUS needs to hear “loud and clear” that there are significant problems with whether the PTAB applies the appropriate claim construction standard (in my opinion it does not for reasons noted by the dissenters), as well as whether a PTAB decision in a IPR that is non-compliant with the enabling AIA statute, as well as its own promulgated rules for IPRs is immune from any judicial review (I shudder at that thought). Now is the time to get that message across to SCOTUS before these problematical IPRs get completely out of control, if they aren’t already

  11. Anon January 20, 2016 9:52 am

    Eric Berend,

    I am not certain what you mean by “de rigeur.’

    Is having the best possible search done prior to writing an application the smart thing to do?

    Is it a “best practice?”
    Again, absolutely.

    Will NOT performing such a search (either to the degree or even at all) something that clients will demand (even clients that are more sophisticated)?
    Again, absolutely.

    Is it a legal requirement?
    Not at all.

    Let me also add that searching – while indeed helpful to writing a solid application – is a function of examination. Re-visit the Tafas case to see why the Office does not have the power to offload that part of the examination onto applicants.

    It is just not a “perfect” world, and the application side of the fence was never meant to be so perfect. We as attorneys likewise do NOT control every aspect of what is submitted (or what is searched).

  12. Robert January 20, 2016 12:43 pm

    I think there is a lot of room for improvement in the search part of the application process.

    There are good reasons for not searching for instance you’re in the nuclear reactor business, which has limited players, so your innovations are on your own technology.

    Statistically it is better to “roll the dice.” With close to 500k applications annually, a presumption of validity, and an 80% issue rate you’re better off not searching.

    How does society benefit from the enforcement of a patent that would not have issued had the examiner been aware of the prior art used to overturn the claims?

    The IPR creates vast uncertainty for applicants however the prior art part of the process needs to be fixed.

  13. Anon January 20, 2016 4:41 pm


    You appear to conflate whose responsibility it is for the “search part.”

    I advise you too to revisit the Tafas case.

  14. Eric Berend January 20, 2016 9:40 pm

    @10, EG: let me be clear that I agree 100,000% with the purpose of said issues being thus advanced. As an inventor with a potential ‘keystone’ invention in power generation I, like many other inventors, have been flummoxed on the thorns of this very concern: not willing to trust the constructive fraud upon the inventor comprised by the current state of these affairs that recent legislative and legal changes have wrought; yet, all too aware of the shortcomings of trade secrets; and with a distinct preference towards the traditional bargain of potentialities offered to both the public interest and the inventor by the former
    jurisprudence of U.S. patent law.

  15. Eric Berend January 20, 2016 9:46 pm

    @11, ‘Anon’: thank you; I appreciate the reminder and partial affirmation of my own understanding of these aspects of said practice of patent prosecution: essentially, it benefits from as clear an understanding as can be reasonable, of separation of the relevant concerns.