- Professor Ryan Holte, Southern Illinois Law
- Professor Mark Janis, Indiana-Bloomington Law
The America Invents Act (AIA) significantly affects the Constitutional separation of powers by creating a new inter partes review (IPR) regime for challenging an issued patent under an Article II Executive Branch entity, the Patent Trials and Appeals Board (PTAB). In practice, the PTAB has become an alternative forum for accused infringers to attack patent claims with less risk and expense than in U.S. federal district courts. Combined with the reluctance and sometime refusal of Article III courts (including the U.S. Court of Appeals for the Federal Circuit) to exert authority over final application of patent law, the statutory adjudicative powers given PTAB judges give rise to separation of powers issues.
As a result, patents that have successfully overcome validity challenges in a “final judgment” of a court are now subjected to double jeopardy in the PTAB, and those valuable but limited patent property rights can be challenged and taken away entirely within an Article II administrative forum. At least two cases pending cert before the U.S. Supreme Court challenge provisions of the AIA on separation of power bases (Cooper v. Lee and MCM Portfolio LLC v. Hewlett-Packard Co.), while another (Cuozzo Speed Technologies, LLC v. Lee) challenging the differences between the PTAB’s and the courts’ claim construction regimes has already been decided. In Cuozzo, the Court upheld the PTAB/USPTO’s application of a different claim construction standard from the courts, tipping the scales against patentees who face a validity challenge during IPRs as compared against in federal district court. Critics of the AIA rules –and particularly IPRs– as applied by the USPTO/PTAB assert that they weaken patents and the patent system, and undermine the incentives for innovation that have driven economic growth for much of this country’s history. This teleforum will include a discussion of the Constitutional challenges to the AIA’s patent review provisions, including the Court’s hints in Cuozzo that it is aware of other Constitutional issues.
On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee. In 2011, the America Invents Act created an expedited procedure, known as inter partes review, to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity. The Patent Trial and Appeal Board, contained within the U.S. Patent and Trademark Office (PTO), hears these disputes rather than a federal district court. When construing patent claims, the Board applies a “broadest reasonable interpretation” standard rather than the “plain and ordinary meaning” standard typically applied by federal courts.
Here, Cuozzo Speed Technologies, LLC. (Cuozzo) owns a speed limit indicator patent. Garmin International, Inc. (Garmin) petitioned the Board for inter partes review (IPR) of claims regarding the patent. The Board found that certain claims were unpatentable and denied Cuozzo’s request to replace those claims with several others. Cuozzo appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit, which (1) held that it lacked authority to review the PTO’s decision to institute IPR, and (2) affirmed the Board’s final determination, finding no error in its application of the “broadest reasonable interpretation” standard.
There were two questions before the Supreme Court: (1) Whether the Federal Circuit erred in holding that the Board may, in IPR proceedings, construe claims according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the Federal Circuit erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the decision to institute the IPR proceeding is judicially unreviewable.
By a vote of 8-0 and 6-2, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Breyer delivered the opinion of the Court, which held that the underlying statute precluded judicial review of the kind of claim at issue here, involving the PTO’s decision to institute IPR. The Court further concluded that the PTO was authorized to issue the regulation, setting forth the “broadest reasonable interpretation” standard.
A unanimous Court joined Justice Breyer’s opinion with respect to Parts I and III. Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, and Kagan joined the opinion with respect to Part II. Justice Thomas filed a concurring opinion. Justice Alito filed an opinion concurring in part and dissenting in part, in which Justice Sotomayor joined.
To discuss the case, we have Gregory Dolin, who is Assistant Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law.
The 2011 America Invents Act created provisions for Inter Partes Review (“IPR”) and Post Grant Review (“PGR”) of patents. According to PTO statistics, to date, nearly 50,000 patent claims have been challenged under IPR, and nearly 11,000 (22.4%) of those claims have been invalidated. On June 20, 2016, in Cuozzo Speed Technologies v. Lee, the Supreme Court upheld the Patent Trial and Appeal Board's (PTAB) interpretation of two key elements of IPR. The Court held that (1) decisions to institute IPR proceedings are non-appealable, and (2) the PTO has the authority to determine claim meaning and validity under its “broadest reasonable construction” standard.
Important outstanding questions about the constitutionality of IPR and PGR remain, however. Specifically, once the Patent and Trademark Office has granted a patent, does a decision made by an administrative judge within the executive branch to invalidate the patent under IPR/PGR amount to a taking under the 5th Amendment of the U.S. Constitution? Moreover, does such a procedure by which issued patents are reviewed for validity by non-Article III judges raise separation of powers issues?
Professor Greg Dolin participated in the Teleforum to elucidate the argument that he and Irina Manta make in their recent article, Taking Patents, that PGR and IPR decisions invalidating patents do indeed amount to takings under the 5th Amendment. Professor Camilla Hrdy and Yale Information Society Law Project Fellow Ben Picozzi believe that PTAB decisions invalidating patents under IPR and PGR do not raise takings problems. These patent experts also discussed separation of powers issues related to IPR and PGR.
On June 13, 2016, the Supreme Court decided Halo Electronics v. Pulse Electronics, which was consolidated with Stryker Corp. v. Zimmer. Both of these cases involved claims of patent infringement relating to the sale or marketing of various inventions. Both also involved a determination by the U.S. Court of Appeals for the Federal Circuit that an award of enhanced damages for infringement under 35 U.S.C. § 284 was not appropriate, after applying the Circuit’s two-part objective/subjective test for willful or bad-faith infringement set forth in In re Seagate Tech., LLC.
The question before the Supreme Court was whether the Federal Circuit’s refusal to allow enhanced damages absent a finding of willfulness under its two-part test was inconsistent with § 284, which provides that in a case of infringement, courts “may increase the damages up to three times the amount found or assessed.”
By a vote of 8-0, the Supreme Court vacated the Federal Circuit’s judgment and remanded the case. Chief Justice Roberts delivered the opinion for a unanimous Court, which held that the Federal Circuit’s Seagate test unduly confined the ability of district courts to exercise the discretion conferred on them by § 284. Justice Breyer filed a concurring opinion in which Justices Kennedy and Alito joined.
To discuss the case, we have Gregory Dolin who is Associate Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law.