by Richard Lloyd
Yesterday’s Supreme Court decision in Cuozzo v Lee
was surely the most eagerly anticipated patent ruling from America’s highest court since it handed down its Alice
judgment two years ago. Such has been the impact of inter partes reviews (IPRs) since they came into force in 2012 that any challenge to their standing was always bound to draw the close attention of the patent community.
The opinion that the institution of an IPR is not appealable and that the USPTO has been correct in using the broadest reasonable interpretation standard when it reviews patent claims, leaves in place the system that has led some to worry for the rights of patents owners in the US.
The appeal issue left open – a view from a former USPTO head
That’s a point that former USPTO Director Todd Dickinson dissects in his response to the opinion. Here’s his analysis which includes parts of Justice Breyer’s majority opinion:
“I think the more important aspect of the opinion may turn out to be the parsing of the appealability issue. While Breyer clearly states that “the statute means what the statute says” on the inability to appeal initiations of IPRs, he then characterises, and minimises, the question of this particular appeal stating:
“the legal dispute at issue [here] is an ordinary dispute about the application of certain relevant patent statutes concerning the Patent Office’s decision to institute inter partes review. 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. §314(d)….. We doubt that Congress would have granted the Patent Office this authority…if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review.”
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