The PTO asserts that the Board's estoppel decision is akin to a decision to institute review, which is nonappealable. In Cuozzo Speed Technologies, LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016), the Supreme Court considered the parallel "no appeal" statute for inter partes review ("IPR") proceedings, 35 U.S.C. § 314(d), and held that Board decisions are nonappealable "where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review." Id. at 2141.
The Patent and Trademark Office has several ways "to reexamine—and perhaps cancel—a patent claim that it had previously allowed." Cuozzo Speed Technologies , LLC v. Lee , 579 U.S. ––––, ––––, 136 S.Ct. 2131, 2137, 195 L.Ed.2d 423 (2016). Congress established the procedure at issue here, inter partes review, in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284, enacted in 2011.
The Honorable Leonard P. Stark, Chief District Judge, United States District Court for the District of Delaware, sitting by designation. This case returns to us from the Supreme Court, which granted certiorari, vacated our previous judgment, and remanded for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). Because we are bound by intervening precedent from this court to do so, we reinstate our earlier judgment and dismiss the appeal filed by Click-to-Call Technologies ("CTC") in this matter.
C. CuozzoSubsequent to our decision in Achates , the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016). In Cuozzo , the Court addressed whether § 314(d) bars judicial review of determinations regarding compliance with § 312(a)(3), i.e. , whether the petition identified with sufficient particularity "each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim."
C. CuozzoSubsequent to our decision in Achates, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). In Cuozzo, the Court addressed whether § 314(d) bars judicial review of determinations regarding compliance with § 312(a)(3), i.e., whether the petition identified with sufficient particularity "each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim."
To win a patent, an applicant must (among other things) file "claims" that describe the invention and establish to the satisfaction of the Patent Office the invention's novelty and nonobviousness. See §§ 102, 103, 112(b), 131; Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ––––, –––– – ––––, 136 S.Ct. 2131, 2136–2137, 195 L.Ed.2d 423 (2016). Sometimes, though, bad patents slip through.
Following institution by the Director and a trial before the Board, the Director may "cancel any claim that the agency finds to be unpatentable" under 35 U.S.C. § 102 and § 103, based on cited prior art consisting of patents or printed publications. Cuozzo Speed Techs., LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 2136, 195 L.Ed.2d 423 (2016). The Board reaches its conclusions based on a preponderance of the evidence and, in doing so, employs the broadest reasonable interpretation of the challenged claims for unexpired patents.
This presumption applies to statutory provisions purporting to limit or preclude our jurisdiction. See Guerrero-Lasprilla v. Barr, ––– U.S. ––––, 140 S. Ct. 1062, 1068, 206 L.Ed.2d 271 (2020) ; Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136 S. Ct. 2131, 2140, 195 L.Ed.2d 423 (2016) ; Kucana v. Holder, 558 U.S. 233, 251, 130 S.Ct. 827, 175 L.Ed.2d 694 (2010). And it "dictates that such provisions must be read narrowly."
IPR in particular was designed to improve on the inter partes reexamination process, and "[a]lthough Congress changed the name from ‘reexamination’ to ‘review,’ nothing convinces us that, in doing so, Congress wanted to change its basic purposes, namely to reexamine an earlier agency decision." Cuozzo Speed Techs., LLC v. Lee , ––– U.S. ––––, 136 S. Ct. 2131, 2137, 2144, 195 L.Ed.2d 423 (2016). Just as with the prior reexamination procedures, IPR "allows a third party to ask the U.S. Patent and Trademark Office to reexamine the claims," id . at 2136, albeit with "broader participation rights," id . at 2137.
In an IPR, "[a] claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears." 37 C.F.R. § 42.100(b) (2017) ; Cuozzo Speed Techs., LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 2146, 195 L.Ed.2d 423 (2016). Under this standard, "words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history."