Cuozzo Speed v PTO Oral Arguments Written Transcript

1 IN THE SUPREME COURT OF THE UNITED STATES
2 x
3 CUOZZO SPEED TECHNOLOGIES, LLC, :
4 Petitioner, : No. 15446
5 v. :
6 MICHELLE K. LEE, UNDER SECRETARY :
7 OF COMMERCE FOR INTELLECTUAL :
8 PROPERTY AND DIRECTOR, PATENT AND :
9 TRADEMARK OFFICE, :
10 Respondent. :
11 x
12 Washington, D.C.
13 Monday, April 25, 2016
14
15 The above entitled
matter came on for oral
16 argument before the Supreme Court of the United States
17 at 11:02 a.m.
18 APPEARANCES:
19 GARRARD R. BEENEY, ESQ., New York, N.Y.; on behalf of
20 Petitioner.
21 CURTIS E. GANNON, ESQ., Assistant to the Solicitor
22 General, Department of Justice, Washington, D.C.; on
23 behalf of Respondent.
24
25
1 CONTENTS
2 ORAL ARGUMENT OF PAGE
3 GARRARD R. BEENEY, ESQ.
4 On behalf of the Petitioner

3
5 ORAL ARGUMENT OF
6 CURTIS E. GANNON, ESQ.
7 On behalf of the Respondent 26
8 REBUTTAL ARGUMENT OF
9 GARRARD R. BEENEY, ESQ.
10 On behalf of the Petitioner 56
11
12
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14
15
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17
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20
21
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24
25
1 P R O C E E D I N G S
2 (11:02 a.m.)

3 CHIEF JUSTICE ROBERTS:

We’ll hear argument
4 next in Case 15446,
Cuozzo Speed Technologies v. Lee.
5 Mr. Beeney.
6 ORAL ARGUMENT OF GARRARD R. BEENEY
7 ON BEHALF OF THE PETITIONER

8 MR. BEENEY:

Mr. Chief Justice, and may it
9 please the Court:
10 I’d like to begin this morning with why the
11 use of the broadestreasonableinterpretation
expedient
12 in no way comports with the congressional purpose of
13 inter partes review, and then address why the Board’s
14 ultra vires determination in instituting inter partes
15 review is subject to judicial review.
16 Consistent with history, Congress left to
17 the judiciary to determine construction standards, and
18 therefore, in the American Invents Act, there is no
19 explicit statutory language directing the Patent and
20 Trademark Office to use any particular standard of claim
21 construction.
22 But this Court should reverse, as a matter
23 of statutory construction, for four reasons. First, in
24 summary, all agree that the
25 broadestreasonableinterpretation
expedient demands a
4
1 broad ability to amend claims, and that’s so because the
2 broadest reasonable interpretation brings into play a
3 broader array of prior art that may be distinguishable
4 if the claims were given their actual interpretation.
5 In establishing inter partes review,
6 Congress sought to substitute and provide a district
7 courtlike
litigation for the determination of
8 patentability, and therefore, did not provide the wide
9 liberty to amend claims, as Justice 10

JUSTICE SOTOMAYOR:

I might be moved by your
11 argument if Congress had not given any right for the
12 Board to amend, because that would be consistent with
13 practices in the district court, where district court
14 can’t amend under any circumstance. But basically,
15 Congress here said you can amend once. I’m not sure
16 that that supports your proposition.

17 MR. BEENEY:

I think Justice
Sotomayor, I
18 think there is a distinction between allowing a party to
19 make a motion to amend and the absolute right to amend
20 even once. And Congress did not provide any right to
21 amend in inter partes review. It provided only an
22 extremely limited ability to seek to amend. And, in
23 fact, in practice, that opportunity to seek to amend is
24 almost always denied. And it is denied consistent with
25 congressional intent of establishing inter partes review
5
1 to be court a court-like adjudication. So simply as
2 a matter of numbers, the Board has denied 95 percent of
3 the motions to amend. In 42 months of inter partes
4 review, the Board has allowed five motions to amend and
5 allowed four less
than 30 claims to be amended, while
6 canceling 10,000 claims.

7 CHIEF JUSTICE ROBERTS:

What’s the second of
8 your four?

9 MR. BEENEY:

The second reason why,
10 Your Honor, the the
result below should be reversed
11 is because the Congress,
in establishing inter partes
12 review, intended inter partes review to adjudicate
13 property rights. And in doing so, it makes no sense to
14 attribute to those property rights a hypothetical
15 interpretation of their meets and bounds rather than
16 doing what district courts do, which is to give claims
17 their actual plain and ordinary meaning.
18 The third reason, Your Honors, why this
19 Court should reverse and and
have the Patent and
20 Trademark Office use the ordinary claim construction
21 matter is because there are a number of anomalies that
22 injure the patent system and injure patentees that stem
23 directly from the use of inter partes review. Those
24 include a claim meaning different things in the courts
25 and before the Board. Those include different results
1 in the courts and the Board as to whether a patentee’s
2 property rights are taken away. And those include
3 claims meaning one thing for patentability in the Board
4 but a wholly different thing for infringement in the
5 district courts. That’s simply untenable, and there’s
6 no reason to suspect that that was anywhere within
7 Congress’s intent in enacting inter partes review.
8 Finally, this Court should reverse because
9 the government really has not in any way offered a
10 support of using the broadest reasonable interpretation
11 that is in any way tethered to inter partes review. It
12 simply says historically, we’ve done this before, and so
13 we should be permitted to do it again.
14 Strikingly missing from the government’s
15 position, however, is really any objection to taking the
16 district court’s substitute that Congress enacted, and
17 using the claim construction that the district courts
18 do, the ordinary meaning of the claim terms.
19 There is nothing really in the government’s
20 brief that suggests that it would be inappropriate to
21 use that claim construction, and that’s the claim
22 construction that should be used.

23 JUSTICE ALITO:

Is the standard is the
24 standard of proof for invalidity the same in an
25 infringement action in district court as it is in inter
1 partes review?

2 MR. BEENEY:

It is not, Justice Alito. And
3 I think the reason there
was a sensible reason behind
4 it in that Congress tweaked the court-like
adjudicatory
5 system and recognized that it was establishing a board
6 of experts, and therefore, there was no reason to have
7 the presumption in favor of patentability that we find
8 in the district courts.
9 But that in no way suggests that the
10 Congress, in enacting inter partes review, was
11 suggesting that there be a different claim construction
12 standard that are used in the district courts when inter
13 partes review was to be a substitute for district court
14 litigation.
15 If I may Your Honors, I’d like to delve into
16 the question that Justice Sotomayor asked about the
17 amendment process.
18 I think it’s important to recognize, as the
19 Patent and Trademark Office repeatedly has before its
20 merits brief in this case, the profound distinction
21 between the permitting
a party to make a motion to
22 amend in an adjudicatory context and the absolute right
23 to amend in the examinational contest context. And,
24 in fact, the PTO, as it participated in the Microsoft v.
25 Proxyconn case, submitted a letter to the Federal
1 Circuit making exactly this point on April 27, 2015.
2 What the PTO said to the court was that, in fact, there
3 is this very profound distinction between the right to
4 make a motion to amend in an adjudicatory context and
5 the ability to amend patents in the examinational
6 context where there is an iterative, backandforth,
7 generally cooperative process between the examiner and
8 the patentee.
9 That is diametrically different to the
10 system that Congress established in inter partes review,
11 as the Patent and Trademark Office represented to the
12 district court.
13 And going back to the statistics that I was
14 citing in response to Justice Sotomayor’s original
15 question, 95 percent of the motions to amend in inter
16 partes review are denied. Less than 30 claims have been
17 amended, while 10,000 have been canceled. And there is
18 simply not the kind of ability that is necessary in
19 order to avoid the prejudice to the patentee of giving
20 her claims a construction broader than what they
21 actually are that’s afforded in inter partes review.

22 JUSTICE ALITO:

Do the Board’s institution
23 decisions always set out what it understands the
24 broadest reasonable interpretation to be? And and
if
25 they do, is it must
the Board stick with that
1 throughout the proceeding? And in that if
that is
2 true, why does the patentholder need more than one
3 opportunity to amend?

4 MR. BEENEY:

The IPR
proceeds in two
5 separate stages, as as
your question implicates,
6 Justice Alito. First, there is the institution
7 decision. In there, the Board typically does set forth
8 a preliminary claim interpretation tandard. But for
9 the government to take the position that that’s the end
10 of the ballgame is wholly inconsistent with its position
11 on the second question presented about appeal.
12 Obviously, the claim construction interpretation is
13 subject to appeal, and so it can’t be fixed in the
14 institution determination.
15 The final claimconstruction standard that
16 the Board applies to make the ultimate decision as to
17 whether the patent is going to survive is in the final
18 decision that the Board renders. At that point in time,
19 it’s too late for the patentee to make any kind of
20 determination as to whether it would like to amend and
21 cancel the claims that are under review.
22 I also think it’s important to distinguish
23 the examinational context, in which, historically, BRI
24 has been cabin to. Historically, in fact, what’s used
25 in the court-like litigation structure that Congress
1 established in inter partes review is the
2 ordinarymeaning standard.
3 But but in addition to the fact that one
4

5 JUSTICE GINSBURG:

How does this work? I
6 mean, suppose you’re right and it should be ordinary
7 meaning. That doesn’t determine who’s going to win or
8 lose this case, does it?

9 MR. BEENEY:

What would happen, Your Honor,
10 if the Court agrees with us that the Board should be
11 using the ordinarymeaning
test, is that the case should
12 be remanded to the Board to give Cuozzo’s claims their
13 appropriate construction. That’s never happened in this
14 proceeding. That would be the result of Your Honors
15 agreeing with us.
16 And we believe that once we go back to the
17 Board and the Board applies the appropriate construction
18 to our claims, our claims will survive review or or,
19 at at
a minimum, we will be permitted to amend,
20 because the basis of the decision by the Board to deny
21 Cuozzo the opportunity to amend was that the claim
22 construction read out of the construction of the claims
23 an embodiment that’s set forth in the specification.
24 Under the ordinarymeaning
standard that the
25 Board should be applying in this adjudicatory context
1 that Congress set up to litigate over substantive
2 property rights, the Board would be applying the
3 ordinaryconstruction
standard which we believe would
4 include the embodiment that’s in this specification,
5 and, therefore, we would receive relief.

6 JUSTICE KENNEDY:

Well, if if the if
7 the patent is invalid under its broadest, reasonable
8 interpretation, doesn’t doesn’t
that mean the PTO
9 should never have issued the patent in the first place,
10 and doesn’t that give very significant meaning and
11 structure to this process?

12 MR. BEENEY:

Not necessarily, Justice
13 Kennedy. And and
the reason is this: The purpose of
14 the broadest reasonable interpretation expedient, as the
15 government agrees it is, it is not a claim construction
16 standard as the Federal circuit said in Skvorecz.
17 What it does is try to test for ambiguity in
18 the claim language, not patentability. Patentability is
19 the standard that Congress set in inter partes review.
20 But what the broadest reasonable interpretation does is
21 try to test for ambiguity in the patent language so it
22 can be amended. So the fact that a patented invention
23 or an application may not pass the broadest reasonable
24 expedient does not mean that the inventor has not
25 claimed a patentable invention. It simply means that
12
1 the language is ambiguous, and the language needs to be
2 refined. And that is a wholly different exercise.

3 JUSTICE KENNEDY:

Well, I I guess I
4 was was
thinking of the mindset
that that
the
5 process, the structure, that the PTO uses in the first
6 place. It looks at a claim. If if I were the
7 examiner to determine whether or not I should grant the
8 patent, I’d say, I’m going to give this the broadest
9 interpretation to make sure I’m right. It seems to
10 me or
am I wrong, that that’s not what they do?

11 MR. BEENEY:

They do, but not to determine
12 whether the claims are patentable. They do to determine
13 whether there’s ambiguity in the language.
14 And, Your Honor, you can go back to a whole
15 line of district court cases from all
the way from
16 Carr in, I think, 1924 in in
the D.C. circuit to the
17 2016 decision in PCC Broadband, and all the cases in
18 between, Skvorecz and and
In re Hyatt and all the
19 other ones. The purpose of the
20 broadestreasonableinterpretation
expedient and it’s
21 called an “expedient” for a reason is to determine
22 whether claim language has ambiguity in it.
23 If it does, then the patent owner can amend
24 and and does so as of right in examinational context,
25 not in the IPR context, the patent owner can amend to
13
1 clarify that her claims really don’t mean what they may
2 broadly be construed to mean.

3 JUSTICE BREYER:

But the question that
4 Justice Kennedy asked, and I think it’s an important
5 one, to me, anyway, was, if you forget
this
6 proceeding. If, in fact, in the broadest possible, or
7 whatever, reasonable interpretation and you were in
8 front of the Patent Office, and that’s what they would
9 look at, and if it was too broad because that broad, you
10 know, it has flaws in it of whatever kind, the patent
11 doesn’t issue. Is that right or not right?

12 MR. BEENEY:

It’s not a question

13 JUSTICE BREYER:

It’s either right or wrong.
14 You can tell me I’m right, or you can tell me I’m wrong.

15 MR. BEENEY:

There isn’t an iterative
16 process with the right to amend

17 JUSTICE BREYER:

I know that.

18 MR. BEENEY:

So

19 JUSTICE BREYER:

I know that. I’m saying:
20 If at the end of the day, on the broadest reasonable
21 interpretation, it is not patentable, there is no patent
22 issued.

23 MR. BEENEY:

That’s correct.

24 JUSTICE BREYER:

Okay. Now

25 MR. BEENEY:

That is correct.
14
1 JUSTICE BREYER:

if that’s so, you could
2 look at this new law as as as you were looking at
3 it, as trying to build a little court proceeding. If I
4 thought it was just doing that, I would say you were
5 right.
6 But there is another way to look at it. And
7 the other way to look at it and
that’s what I would
8 like your comment about is
that there are these
9 things, for better words, let’s call them patent trolls,
10 and that the the
Patent Office has been issuing
11 billions of patents that shouldn’t have been issued I
12 overstate but
only some. And what happens is some
13 person in business gets this piece of paper and and
14 looks at it and says, oh, my God, I can’t go ahead with
15 my invention.
16 And so what we’re trying to do with this
17 process is to tell the office, you’ve been doing too
18 much too fast. Go back and let people who are hurt by
19 this come in and get rid of those patents that shouldn’t
20 have been issued. Now, we will give you, again, once
21 the same chance we gave you before, and that is you can
22 amend it once if you convince the judge you should have
23 done it before. But if, on the broadest possible
24 interpretation, you know, reasonable interpretation, it
25 shouldn’t have been issued, we’re canceling it. And

1 and that is for the benefit of those people who were
2 suffering from too many patents that shouldn’t have been
3 issued in the first place. I don’t know.
4 If it’s that second purpose, then I would
5 think, well, maybe this is right, what they’re doing.
6 And if it’s ambiguous between those two purposes, I
7 would begin to think, well, maybe they should have the
8 power themselves under Chevron, Meade, or whatever, to
9 decide which to do.
10 Now, that’s that’s
the argument, I think,
11 that’s in my mind registering the other way. So what do
12 you say?

13 MR. BEENEY:

Justice Breyer, if I agreed 14
and respectfully, I’d like to explain why I disagree.

15 JUSTICE BREYER:

Uhhuh

.
16 MR. BEENEY:

But but even if I did agree,
17 I I would say that Congress, in fact, established
18 exactly what Your Honor described. But it established a
19 system in which we are adjudicating property rights.
20 And it makes no more sense to adjudicate those property
21 rights in a court like setting by pretending that those
22 rights are not what, in fact, was granted, what the
23 patentee claims, or what the patentee could assert in
24 district court infringement litigation than it does
25 to when
you’re in trying
to determine whether
16
1 someone’s property encroaches on another, which which
2 I would submit is really an apt analogy for the
3 obviousness anticipation tests. We look at what the
4 boundaries the metes and bounds of that property
5 actually is.
6 So Congress, assuming that it did what Your
7 Honor suggested, established a system to do that, but it
8 established a system to adjudicate in a courtlike
9 setting the actual patent rights that a patentee
10 obtains, not ones that someone suggests might be
11 broader. That is to determine ambiguity in claim
12 language, not to adjudicate rights.

13 JUSTICE SOTOMAYOR:

I’m sorry. If language
14 is ambiguous, it can’t have that plain meaning, can it?

15 MR. BEENEY:

I’m sorry?

16 JUSTICE SOTOMAYOR:

How would you have a
17 plain meaning that a district court would apply if
18 language is ambiguous? How could it say that you have a
19 valid property right in something that’s ambiguous?

20 MR. BEENEY:

The test of the ordinary

21 meaning, as enunciated by Philips and its progeny, will
22 first look at the claim language. If there’s ambiguity
23 in the claim language, then what is the meaning of that
24 patent will be determined in light of the specification,
25 the prosecution history, and other intrinsic evidence.
1 In the rare case where there still may be
2 ambiguity, then the Court may consider extrinsic
3 evidence, dictionaries, other writings by the patentee,
4 what somebody of ordinary skill in the art might
5 determine a particular claim limitation to mean.
6 So there are a number of tools in the
7 ordinary meaning construction standard that should be
8 used here to

9 JUSTICE SOTOMAYOR:

Aren’t those tools used
10 in determining the broadest

the broadest reasonable
11 reading, meaning how can the PTO decide what a broad
12 reasonable reading is unless it looks at all of those
13 factors and decides that the specifications and all the
14 other things don’t cure, continue to provide ambiguity
15 in the patent?

16 MR. BEENEY:

It it
does not. The
17 broadest reasonable interpretation is considerably
18 different than the ordinary meaning of construction
19 standard, and the fact that the Patent and Trademark
20 Office has admitted as much. In the manual for patent
21 examination procedures, the Patent and Trademark Office
22 tells its patent examiners, we, quote, “do not interpret
23 claims in the same manners as the courts.”
24 Just recently, a very important tool that
25 courts look at in the ordinarymeaning
context, the
18
1 prosecution history, in the Federal Register the Patent
2 and Trademark Office said that the only time it looks at
3 prosecution history is when it is actually raised by the
4 parties, relied on by the parties, and explained by the
5 parties.
6 There are very different sub tools, if you
7 will, within broadest reasonable interpretation and
8 ordinary meaning, and that’s because they intend to
9 accomplish different purposes. One adjudicates
10 patentability, which is what Congress intended in IPR.
11 The other identifies ambiguity in claim language.
12 In fact 13

CHIEF JUSTICE ROBERTS:

Why 14

MR. BEENEY:

if
one looks at if
one
15 looks at the manual in Section 2111, the PTO tells its
16 examiners that one of the reasons we use the broadest
17 reasonable interpretation is because, unlike the courts,
18 we don’t have before us a fullydeveloped
prosecution
19 history. Well, when you’re in inter partes review, you
20 do have a fullydeveloped
prosecution history, and
21 that’s what we should be looking at.

22 CHIEF JUSTICE ROBERTS:

How does the
23 relationship between the district court infringement
24 action and the proceeding before the Board actually work
25 out in practice? If you’re suing someone, here’s my
19
1 patent, you’re infringing it, and the infringer goes to
2 the the
Board and says I want you to determine the
3 validity of the patent, and the district court is doing
4 the same thing, or at least determining the scope of the
5 patent and whether or not it infringes?

6 MR. BEENEY:

What typically happens, Mr.
7 Chief Justice, is in those situations where a patent is
8 not subjected to inter partes review, and I file an
9 infringement case, is that the defendant may then seek
10 to file a petition before the Board 11

CHIEF JUSTICE ROBERTS:

Right.

12 MR. BEENEY:

seeking
review of the patent
13 and CICA stay in the district court.
14 And in fact, in this rather substantial
15 transfer of the adjudicatory function from the judiciary
16 to the administrative agency, we find that about 85
17 percent of patents that are being adjudicated by the
18 Board are subject to district court litigation. And in
19 those 85 percent of the time, district courts are
20 entering stays 70 percent of the time. So in fact, what
21 is happening is the judiciary is deferring to the Board
22 in making decisions about the patentability of the
23 claims that are at issue.

24 CHIEF JUSTICE ROBERTS:

I would think that’s
25 a little burdensome to the district court. They sort of
1 have to get deeply into the patent case and then take
2 whatever the Board says is the proper whether
it’s
3 valid or not.

4 MR. BEENEY:

Well, that, in fact, what
5 happens is that should a claim survive inter partes
6 review, then there are various estoppel provisions that
7 Congress enacted in the America Invents Act that prevent
8 the relitigation of the identical prior art that may
9 have been adjudicated by the Board in IPR.
10 So the district courts don’t need to revisit
11 what happened in inter partes review, which is yet
12 another example of why Congress intended inter partes
13 review to be a substitute for district court litigation.

14 JUSTICE KENNEDY:

Well, in the district
15 court please
correct me if I’m wrong does
the
16 district court have the obligation to to
interpret
17 the statute in a way that preserves the patent’s
18 validity?

19 MR. BEENEY:

Only as
I was going through
20 that litany of steps with Justice Sotomayor, only when
21 the claims are ambiguous. We go to the intrinsic
22 evidence. If that’s ambiguous, we go to the extrinsic
23 evidence. And then if, really 24
JUSTICE KENNEDY: But I would not think that
25 the the
that
in the IPR, that rule would prevail.

1 MR. BEENEY:

In in
inter partes review
2 there is no presumption of validity. Congress
3 recognized

4 JUSTICE KENNEDY:

That that
shows a
5 difference in these proceedings.
6 MR. BEENEY: There no doubt is a difference
7 in the proceeding. But the fact that Congress
8 recognized the expertise of this newly created Board
9 that it was establishing, and thereby removed the
10 presumption because of the expertise, in no way suggests
11 that, in adjudicating patentability, the Board in IPR
12 should be dispensing with all the guidance that this
13 Court has has
provided, and all the guidance that
14 other courts have provided, in giving patent rights in
15 adjudicating whether they are patentable, their ordinary
16 meaning.
17 JUSTICE KAGAN: Are please.
18 MR. BEENEY: No. I was just going to say,
19 Justice Kagan, it just doesn’t simply flow.
20 JUSTICE KAGAN: Is is
your argument, Mr.
21 Beeney, that Congress couldn’t have thought anything
22 else except that the ordinarymeaning
standard would
23 control? Because if I look at the statute, I mean, it
24 just doesn’t say one way or the other. So we’re a
25 little bit reading tea leaves, aren’t we?
1 MR. BEENEY: I think not, Justice Kagan.
2 And I think your your
first sentence is perhaps
3 really only at the margin in exaggeration of our
4 position, and and
it is because of this: Take one
5 factor that that
Congress enacted in IPR, a 12month
6 period from which the time the Board must reach its
7 final decision absent good cause. Contrast that with
8 the examination proceedings. The examinational context
9 and the reexaminational context take two to three years.
10 Why do they take two or three years? They take two to
11 three years because this is iterative, back and forth,
12 looking for prior art, discussing with the patentee what
13 did she invent, asking her to amend her claims if
14 they’re deemed to be ambiguous or too broad. That
15 doesn’t happen in in
inter partes review. It can’t
16 happen because of the time frame that Congress
17 legislated.
18 There are other reasons why 19
JUSTICE KAGAN: I mean, I guess if I’m
20 trying to put myself in Congress’s position, I’m I’m
21 looking at the PTO, and it does pretty much everything
22 by this broadestconstruction
standard. And if I had
23 the clear intent that you’re suggesting, given the
24 backdrop of how the PTO generally operates, wouldn’t I
25 say so?
23
1 MR. BEENEY: I think not, Justice Kagan, for
2 the historical reason that Congress has never addressed
3 claimconstruction
issues. It’s always been a matter
4 left to the judiciary, number one.
5 And number two, the process that Congress
6 enacted in IPR is a brand new adjudicatory proceeding
7 unlike the PTO has ever confronted in the past. I mean,
8 arguing that one in inter partes review should use the
9 broadest reasonable interpretation is is
really the
10 quintessential example of trying to pound a square peg
11 into a round hole simply because that peg used to fit a
12 very different hole.
13 Congress established a very different
14 proceeding in inter partes review. It is courtlike;
it
15 is done under very similar circumstances to the way a
16 case proceeds in a district court; it adjudicates actual
17 property rights and takes those property rights away.
18 And for all those reasons, if I may say, the statute
19 basically reeks that the ordinarymeaningconstruction
20 standard used by the district courts should be used.
21 JUSTICE GINSBURG: Kind of a hybrid. It has
22 in
certain respects it resembles administrative
23 proceedings and other district court proceedings. So
24 there there
is a right to amend, or an opportunity,
25 an opportunity to amend before the agency; there isn’t
1 in court. There are discovery differences; there are
2 other differences. So it’s a it’s
a little of one
3 and a little of the other, this inter partes review.
4 MR. BEENEY: I think, Justice Ginsburg,
5 there are differences, but none of them go to the
6 fundamental fact of the claimconstruction
standard.
7 The system that Congress established is consistent only
8 with ordinary meaning.
9 And if you look again at this ability to
10 amend, in fact, in in
examinational proceedings,
11 patent applications are almost always amended. In
12 reexamination they’re amended 66 percent of the time.
13 In inter partes review, they’re amended less than one
14 half of one percent of the time, and that is why the
15 claimconstruction
standard should be the ordinary
16 meaning.
17 If I may, Your Honors, I’d like to just very
18 briefly turn to the issue of appellate review of the
19 Board’s institution decision when the Board exceeds a
20 statutory authority.
21 Just a very
briefly, our position is that
22 under the heavy presumption of judicial review of
23 administrative actions, there’s nothing in the statutory
24 scheme that meets the heavy burden to overcome that
25 presumption.
1 The statutory scheme here can be read,
2 either as the government would like to read it, to bar
3 review forever; but then that provision has to be
4 limited to its terms, that what is barred is the
5 director’s decision to institute under that section, as
6 the statute says, not all the other criteria used in
7 determining whether to institute review.
8 But a better reading, as established by the
9 Federal circuit in Versata, and the government’s
10 original position in Versata is that the statute only
11 prevents interim interlocutory review of the institution
12 decision at the time. Under Mach Mining, under Boeing,
13 this Court ought to find that the statute can be read to
14 permit review, and it should.
15 And if there are no further questions, I’d
16 like to reserve my remaining 17
JUSTICE GINSBURG: Then I have just one
18 question about that.
19 Then this statute is doing no work, because
20 there would be a bar on interlocutory review under the
21 final judgment rule, in any event. You don’t need a
22 statute to preclude interlocutory review when the
23 reviewing court can review only final judgments.
24 MR. BEENEY: Correct, Justice Ginsburg.
25 But but
what the statute does do that the
1 Administrative Procedures Act does not do is, number
2 one, bars appeal forever of decisions not to institute.
3 Because those decisions will never become part of the
4 final decision which you can appeal under a separate
5 statutory scheme under the American Invents Act. The
6 statute does that work. And the statute also does the
7 work of barring interlocutory petitions for mandamus.
8 CHIEF JUSTICE ROBERTS: Thank you, counsel.
9 MR. BEENEY: Thank you.
10 CHIEF JUSTICE ROBERTS: Mr. Gannon.
11 ORAL ARGUMENT OF CURTIS E. GANNON
12 ON BEHALF OF THE RESPONDENT
13 MR. GANNON: Mr. Chief Justice, and may it
14 please the Court:
15 The PTO has reasonably decided to use its
16 longstanding broadestreasonableconstruction
approach
17 in inter partes review proceedings because, as
18 Justice Ginsburg just noted, that they are a hybrid
19 between they’re
they’re
not exactly like anything
20 that has gone before. But the PTO reasonably concluded
21 that they are materially more like all of the other
22 proceedings that the PTO, and before that, the Patent
23 Office, has had in which it has repeatedly used
24 precisely this approach. And it has expressly used it
25 when it is possible for claim amendments to be made
1 because it promotes the improvement of patent quality
2 that Congress was interested in promoting in the America
3 Invents Act by eliminating overly broad questions.
4 JUSTICE SOTOMAYOR: Mr. 5
CHIEF JUSTICE ROBERTS: I’m not 6
JUSTICE SOTOMAYOR: I’m sorry.
7 CHIEF JUSTICE ROBERTS: Please, please.
8 JUSTICE SOTOMAYOR: Mr. Gannon, I’m I’m
a
9 little bit confused. You bring a patent. You go into
10 the reexamination back and forth, with the Patent Office
11 giving it the broadest reasonable interpretation. And
12 you make amendments until you get to the point where the
13 Patent Office thinks that whatever you have is clear
14 enough to get a patent, correct?
15 MR. GANNON: Clear enough and also satisfies
16 the the
requirements of patentability.
17 JUSTICE SOTOMAYOR: All right. So how
18 different at the end of that process is the ordinary
19 meaning from a continuing broad meaning? You’ve already
20 had all these chances to amend, to make things as
21 precise and as narrow as the Patent Office thinks it
22 needs to be.
23 MR. GANNON: Well, I do think that it is the
24 case that in most circumstances, these two different
25 forms of construction are going to end up in the same
1 place. That’s true in most of the case law. The Dell
2 amicus brief supporting us explains this, in particular,
3 that it’s 4
JUSTICE SOTOMAYOR: All right. So when
5 doesn’t it end up in the same place?
6 MR. GANNON: It doesn’t end up in the same
7 place basically when you get to the very end and the
8 Court has to apply the presumption of validity that
9 Justice Kennedy was discussing before that requires the
10 Court to adopt a saving construction of a patent. It
11 gets to the end of the process. In both procedures, in
12 the broadest reasonable interpretation and in the
13 Philips standard, they’re going to start with the
14 language of the claim in light of the specification as
15 it would be understood by a person of ordinary skill in
16 the arts. It’s true in the initial examination context
17 that the PTO does not use prosecution history, but it
18 has expressly noted that it will use prosecution history
19 in a proceeding like this, the IPR 20
JUSTICE SOTOMAYOR: That’s what I that’s
21 what I 22
MR. GANNON: because
it’s already in
23 existence. And and
my friend noted that it will only
24 consider prosecution history that’s briefed by the
25 parties in the IPR. But the same thing is, of course,
1 true in a district court proceeding. The district
2 court’s going to consider prosecution history that’s
3 introduced to it before the parties.
4 And so at the end of the analysis if a if
5 a court or the PTO are left with two different
6 potentially reasonable readings of a of
a patent
7 claim, a court has to adopt the saving construction that
8 ends the PT the
one in in
if
the concern is one
9 about obviousness or anticipation in light of prior art,
10 that’s probably going to be the narrower construction.
11 The Board the
Board and the PTO, by
12 contrast, and before that, the Patent Office, have
13 recognized that if you have a claim that could
14 reasonably be read this
isn’t just a hypothetical
15 reading, but this is one, when you take all of this into
16 account, that could reasonably be read as reading on a
17 prior patent or as being obvious in light of a prior
18 patent, then that’s a circumstance in which the Board is
19 going to say, you need to make this clear. Otherwise,
20 we’re going to hold that it’s not patentable.
21 And that’s exactly what’s happening in the
22 motions to amend that are happening before the Board in
23 IPR proceedings right now. My friend is correct 24
CHIEF JUSTICE ROBERTS: Go ahead.
25 MR. GANNON: in
saying that the vast
30
1 majority of motions to amend in IPRs have thus far been
2 denied. Only about 13 percent of of
patentholders in
3 IPRs have actually filed motions to amend. And there
4 have now been six motions to amend that are granted.
5 There was one new one last week. It’s a small number.
6 But the vast majority of these amendments
7 are denied on grounds of unpatentability. And this is a
8 reason that actually isn’t that different from what
9 would happen in the initial exam or in the or
in the
10 reexam.
11 And so my friend quotes Section 305, which
12 is the standard allowing for a patentholder to propose
13 amendments in a course of an ex partes reexamination.
14 But note that it’s the ability to propose amendments.
15 That’s not an amendment as of right. Just because you
16 propose an amendment in a in
a reexamination doesn’t
17 mean that the PTO, at the end of that, is going to say
18 that’s right. This is patentable as as
you have
19 proposed the amendment. It still has to find that, as
20 amended, it does not read on the prior art.
21 And 22
CHIEF JUSTICE ROBERTS: But the one 23
MR. GANNON: what’s
happening here is the
24 PTO is denying motions because even with the amendment,
25 they would read on prior art and be unpatentable.
31
1 CHIEF JUSTICE ROBERTS: I think as Justice
2 Ginsburg described it, we’re dealing with a hybrid
3 entity with characteristics of the PTO and the district
4 court. But it seems to me perfectly clear that Congress
5 meant for this entity to substitute for the judicial
6 action.
7 So why why
should we be so wedded to the
8 way they do business in the PTO with respect to the
9 broadest possible construction when the the
point is
10 not to replicate PTO procedures. It’s supposed to take
11 the place of district court procedures.
12 MR. GANNON: It’s supposed to take the place
13 to some extent, but not to the ultimate extent. It’s
14 not supposed to perfectly replicate the results of
15 district court litigation. And we know that because
16 Congress has imposed structural differences on the IPR
17 proceeding that will guarantee that there could be
18 different results at the end of the day.
19 Most importantly, there’s the different
20 burden of proof. If you even
though you’re arguing
21 about invalidity, the the
in
in
the district
22 court proceeding you’re going to have to prove
23 invalidity by clear and convincing evidence under this
24 Court’s 25
CHIEF JUSTICE ROBERTS: Yeah, but I think we
1 ought we
shouldn’t, except as far as the number of
2 broadest different procedures as we we
can, it’s a
3 very extraordinary animal in legal culture to have two
4 different proceedings addressing the same question that
5 lead to different results.
6 MR. GANNON: That’s true, Mr. Chief Justice.
7 But they they
can lead to different results here for
8 multiple reasons, even setting aside the question of
9 whether the broadest reasonable interpretation applies
10 here.
11 CHIEF JUSTICE ROBERTS: Well, you’re just
12 saying that, okay, there’s a problem here, and so we
13 should accept another problem that’s presented where we
14 don’t have to do it.
15 MR. GANNON: Well, we we
do think that
16 the reason why this ultimately ends up being more like a
17 Board proceeding or a PTO proceeding is because there’s
18 the ability to make claim amendments. You’re not, at
19 the end of the process, just stuck with having to adopt
20 a saving construction of the patents. The the
patent
21 owner can come in and say, look, I can fix that problem.
22 I can keep this from being obvious.
23 CHIEF JUSTICE ROBERTS: Well, are you saying
24 in the IPR proceeding?
25 MR. GANNON: In the IPR that’s

1 CHIEF JUSTICE ROBERTS: Well, that’s
2 happened six times ever.
3 MR. GANNON: It’s it
the
out
of 4
yes, it’s a small number so far. Many more motions 5
actually, three times as many motions, 16 motions have
6 been denied as moot. They were contingent amendments,
7 where the the
patent owner said, well, if you’re
8 going to adopt if
you’re going to disagree with my
9 claim construction, I would propose amending the patent
10 this way. And the Board said, we deny your motion as
11 moot because we agree with your construction that the
12 patent is actually patentable without the amendments.
13 And this is not an instance where the patent
14 owner is shooting in the dark, where he has only one
15 chance to amend. As was already mentioned, the the
16 PTO, the Board, is generally going to give a preliminary
17 claim construction when it issues its its
decision to
18 institute the proceedings. Here, at Pages 171 to 177a
19 of the Petition Appendix, there are seven pages of the
20 Board explaining, in its decision to institute this
21 proceeding, what it thinks the phrase “integrally
22 attached” means for purposes of this patent.
23 CHIEF JUSTICE ROBERTS: But there’s already
24 been there’s
already been a case where you’ve had
25 contrary results with respect to the same patent, right?
34
1 In the same in
other words, parallel litigation; one
2 says A and the other says not A.
3 MR. GANNON: Yes, that can happen.
4 CHIEF JUSTICE ROBERTS: Well, what do you do
5 in that case?
6 MR. GANNON: Well, in that case, if the
7 patent has been invalidated by the PTO, then the
8 district court litigation is is
going to abate. If
9 the if
the 10
CHIEF JUSTICE ROBERTS: So you put the
11 district court to all the trouble? I mean, we’re
12 talking about district courts that don’t do patent cases
13 on a regular basis. You put the district court to all
14 the trouble of trying to construe the patent, and then
15 the the
defendant comes in and says, well, guess
16 what? I won before the IP review, and so sorry, but all
17 that was wasted energy.
18 MR. GANNON: Well, the I
think this is
19 the reason why the most
district court proceedings
20 have been stayed while pending a parallel IPR proceeding
21 before the Board. And there are time limits on the
22 ability Congress
expressly addressed this in
23 Section 315, where it talked about about
the
24 inability of somebody who’s already brought a district
25 court suit alleging invalidity of a patent to bring an
35
1 IPR proceeding or somebody who’s in privity with such a
2 person. And and
there are a time limit that if
3 some if
you’ve been sued for infringement by the
4 patent owner in district court, then you have to start
5 one of these IPR proceedings within 12 months.
6 And so usually, the district court hasn’t
7 gotten that far along, and there isn’t that much wasted
8 effort. And instead, what we do is we go back to the
9 PTO, and the PTO gets exactly the chance that Congress
10 expected it to have, to say, is this one of those
11 patents that we really oughtn’t to have issued in the
12 first place?
13 JUSTICE BREYER: All right. Is that 14
JUSTICE KENNEDY: Is there a difference
15 in the in
the the
Board proceeding, the IPR,
16 and and
the district court litigation, in this
17 respect: With district court litigation, we’re very
18 concerned because of Article III, and we have to have a
19 specific controversy, specific injury, and so forth, but
20 that an IPR proceeding can be more speculative, in that
21 the Board and the parties can say this could be
22 interpreted in the future in a particular way. Is
23 that is
there a difference to the tone or or
the
24 thrust of of
the inquiries in the in
the two
25 instances?
36
1 MR. GANNON: Well, I think that, ultimately,
2 the question in the IPR is is
narrow, because it’s
3 only devoted to a couple types of unpatentability. And
4 it’s going to be about whether the PTO ever should have
5 issued this patent because it was, in fact, anticipated
6 by a prior patent, or it was obvious in light of prior
7 art, and 8
JUSTICE KENNEDY: Well, you say it’s a 9
it’s narrow, but we have the broadest possible
10 construction. I’ll I’ll
work with that. I think
11 you’re probably right.
12 (Laughter.)
13 MR. GANNON: But what I mean by “narrower”
14 is that in in
a district court proceeding, there are
15 other grounds that could be used to challenge the
16 patents and and
it it
could proceed along
17 different lines. This this
is a narrower trap in
18 which the only grounds that can be considered are going
19 to be invalidity on the basis of 102 or 103. And it is
20 true that you do not have to be somebody who would have
21 Article III standing in order to initiate an IPR.
22 That’s another thing that we think shows that this
23 wasn’t intended to be just a perfect substitute for
24 district court litigation.
25 To be sure, most of these IPRs are going to
1 be instituted by parties who do have a competitive
2 interest, who were concerned about whether they’re going
3 to be sued for infringement on the basis of this patent,
4 or or
and,
therefore, they want to make sure that
5 this patent that they think ought not to have been
6 issued is invalidated. And this is 7
JUSTICE BREYER: What’s the evidence? That
8 is to say, I picked that up from your brief, that this
9 statute is, in part call
it a partialGroundhogDay
10 statute. You’ll do it again until you get it right, and
11 partly, it’s designed here to go back to the I
to
12 the Patent Office, probably because a large number of
13 businessmen told Congress that they were getting threats
14 of suits in respect to patents that obviously should
15 never have been issued.
16 Now, if that was the problem, then it
17 doesn’t make it
does make sense to say at least the
18 PTO has the authority under a partialGroundhogDay
19 statute to do that part of it over. And that’s not
20 surprising; there are only six that actually got
21 amended, because they narrowed it before and because the
22 PTO held these are invalid, anyway. Okay? That
23 isn’t so
that doesn’t move me.
24 But look at the view I just expressed of the
25 statute. There is another view that this is just a
38
1 little district court proceeding designed to save people
2 that time and money that they’d have to spend on a big
3 district court proceeding. All right?
4 Now, what’s the evidence that the first view
5 that I had, which would not say this is just a little
6 district court proceeding, is correct?
7 MR. GANNON: Well, I think we have two
8 different types of evidence. We do have the legislative
9 history that we quote in our brief that said the
10 committee report said that a purpose of this was to
11 improve patent quality and and
help justify the
12 presumption in favor of validity that a company’s issued
13 patents in district courts.
14 But then in terms of the notion that it’s
15 not just intended to be another little district court
16 proceeding that happens to be faster and cheaper is 17
is all of the structural differences that Congress
18 imported here to ensure that it wasn’t going to be
19 exactly the same. And so, as I mentioned, it was going
20 to be limited to certain particular grounds of of
21 unpatentability under 102 and 103. The evidence that
22 could be considered there is limited. The only prior
23 art that can be considered is prior art that comes in
24 patents and prior publications. That’s a narrower
25 universe than could be used in a district court
1 proceeding. And, of course, the burden of proof is
2 going to be different.
3 And so we think that in in
speaking to
4 all of those things expressly and and
then also in
5 ensuring that there still would be an opportunity to
6 amend claims, that, ultimately, is the reason why this
7 is not sufficiently like district court litigation for
8 the PTO to part to
depart from its longstanding
9 practice of using the BRI approach in every type of
10 proceeding, including postgrant
proceedings. This
11 isn’t the first Groundhog Daytype
statute that that
12 the PTO has had.
13 CHIEF JUSTICE ROBERTS: Is there what
14
is the district court free to disagree with the PTO
15 reading of the patent? Could it say, fine, this is a
16 pertinent fact, a mixed question of law, in fact, in
17 litigation pending before me. And I appreciate the fact
18 that you think this agency thinks this, but my
19 responsibility is to decide this case according to the
20 facts and law, and I disagree with the PTO’s reading.
21 MR. GANNON: Yes. As long as the patent
22 still exists. If the end of the IPR proceeding is the
23 cancelation of the relevant claim, then there isn’t
24 going to be something to be litigated about in district
25 court.
1 CHIEF JUSTICE ROBERTS: Well 2
MR. GANNON: But otherwise, the claim
3 construction that is adopted in in
along
the way
4 in getting to upholding the patent claim isn’t going to
5 bind the district court any more than the district court
6 claim construction would bind a different district court
7 or the PTO.
8 CHIEF JUSTICE ROBERTS: Well, can it say
9 that I understand what PTO thinks the scope of the
10 patent is, but my responsibility is to interpret it
11 pursuant to a different standard, and under my different
12 standard I have a different result?
13 MR. GANNON: Yes. That that
could be the
14 difference, and that is exactly what the courts have
15 repeatedly recognized, going back, as my friend noted,
16 to the 1924 decision from the D.C. circuit in the Carr
17 case, which recognized that the PTO and the courts are
18 using different standards precisely because you can
19 still clarify the scope of the claim when you’re before
20 the PTO.
21 CHIEF JUSTICE ROBERTS: So if the district
22 court interprets the patent, is is
that binding on
23 the PTO?
24 MR. GANNON: No.
25 CHIEF JUSTICE ROBERTS: And if the PTO
1 interprets the patent, that’s not binding on the
2 district court.
3 MR. GANNON: That’s right. And the same
4 thing is it’s
5
CHIEF JUSTICE ROBERTS: Well 6
MR. GANNON: The same thing 7
CHIEF JUSTICE ROBERTS: I’m sorry. It just
8 seems to me that that’s a bizarre way to conduct
9 legal decide
a legal question. I mean, who how
10 does it work? Whoever gets to the judgment first, or 11
MR. GANNON: Well, with respect to the
12 question of whether the patent still exists, if the PTO
13 cancels the claims at the end of the proceeding, then
14 there won’t be something to be litigating about in
15 district court.
16 If the PTO holds that the burden of proving
17 that this claim is unpatentable has not been satisfied,
18 then somebody else can take another shot at that before
19 the district court.
20 This particular party who proceeded before
21 the IPR 22
CHIEF JUSTICE ROBERTS: Right.
23 MR. GANNON: won’t
be able to, because
24 they’ll be estopped by Section 315 from pursuing the
25 same arguments in both forums.
42
1 CHIEF JUSTICE ROBERTS: Even though they’re
2 different standards of proof?
3 MR. GANNON: Even though they’re different
4 standards of proof.
5 CHIEF JUSTICE ROBERTS: Is that how estoppel
6 normally works?
7 MR. GANNON: Here, Congress has expressly
8 prescribed that you cannot use, in the district
9 proceeding, an argument that you could have advanced 10
CHIEF JUSTICE ROBERTS: So the answer to my
11 question is, no, that’s not the way estoppel normally
12 works.
13 MR. GANNON: That’s right. But I would also
14 say that in this context, the Court has recognized in
15 Blonder Tongue that estoppel that
that
people can
16 repeatedly relitigate the question of patent validity in
17 district courts around the country.
18 CHIEF JUSTICE ROBERTS: Is there another
19 example where you have a complaint filed that puts an
20 issue before the district court during which the the
21 parties can take that issue away from the district court
22 and come up with an answer that then binds well,
I
23 guess you’re saying it doesn’t bind the district court.
24 MR. GANNON: I I’m
saying that if the PTO
25 has the ability in the meantime to cancel the claim, to
1 find that, yes, it is correct, this is one of those
2 patents we never ought to have issued in the first
3 instance, and that’s true because when we’ve applied our
4 broadestreasonableconstruction
approach 5
CHIEF JUSTICE ROBERTS: Right.
6 MR. GANNON: and
the patent owner has 7
has proffered amendments, they can’t come up with
8 something that is actually patentable 9
CHIEF JUSTICE ROBERTS: Right. And that’s
10 because of their their
view, and then it goes back to
11 the district court, and the district court said, well,
12 thank you very much for your opinion, but my job is to
13 give a different analysis. I’m not bound by this
14 broadestpossible
reading. And when I read the patent,
15 I think it comes out the other way, and that’s how I’m
16 going to decide this case.
17 MR. GANNON: It is true that a district
18 court, as long as the patent still exists and the
19 district court has jurisdiction over the parties and the
20 parties aren’t precluded from from
raising those
21 claims, it could end up at a different result at the end
22 of the day, precisely because of a higher burden of
23 proof and the fact that it it
has to adopt the saving
24 construction 25
CHIEF JUSTICE ROBERTS: And this is under

44
1 MR. GANNON: that
the PTO would not need
2 to adopt.
3 CHIEF JUSTICE ROBERTS: And this is under a
4 statute designed to make the patent system more
5 reasonable and more expeditious in reaching judgments?
6 MR. GANNON: Yes. And and
this is
7 something where Congress has expressly delegated to the
8 agency the authority to make regulations governing inter
9 partes review and say at 316(b) 10
JUSTICE BREYER: How how
does this
11 happen? I I
thought we send it back, and the PTO
12 says we shouldn’t have issued it.
13 MR. GANNON: And if 14
JUSTICE BREYER: They say that we cancel it.
15 MR. GANNON: If 16
JUSTICE BREYER: So there is nothing in the
17 district court; isn’t that right?
18 MR. GANNON: Yes. I mean, at that point,
19 the the
patent owner can appeal to the Federal
20 circuit. The Federal circuit 21
JUSTICE BREYER: Can appeal what? Can
22 appeal the cancelation?
23 MR. GANNON: Can appeal the decision that 24
the final written decision of the Board is one that will
25 say

1 JUSTICE BREYER: And if they never issue a
2 patent, I apply for a patent because I have this thing
3 that instead of putting red cellophane on the
4 speedometer, I put purple cellophane on the speedometer.
5 It signals the presence of a hot dog stand. All right?
6 (Laughter.)
7 JUSTICE BREYER: I I
then try to patent
8 it. And they look at this patent and, no, absolutely
9 not.
10 Can I appeal to the Court?
11 (Laughter.)
12 MR. GANNON: Well, if if
I’m
sorry.
13 JUSTICE BREYER: I’m sorry. They don’t
14 issue a patent.
15 MR. GANNON: But the point 16
JUSTICE BREYER: I have an application.
17 MR. GANNON: The point 18
JUSTICE BREYER: They don’t issue a patent.
19 Can I appeal their decision to the Court?
20 MR. GANNON: You would be able to yes.
21 And and
so here, ultimately 22
CHIEF JUSTICE ROBERTS: I’m sorry. Just to
23 interrupt. You’re talking about something else. You
24 mean appeal to the Federal circuit, right?
25 MR. GANNON: That that
he
was talking
1 about a patent application, yes. And also, here,
2 there’s going to be an appeal to the Federal circuit of
3 the of
the substantive merits of the Board’s decision
4 that this patent claim is unpatentable. It doesn’t
5 satisfy the standard. And so 6
CHIEF JUSTICE ROBERTS: But I what
I was
7 asking 8
MR. GANNON: ultimately,
that’s 9
CHIEF JUSTICE ROBERTS: I’m sorry. What I
10 was asking, I think, is a different question. The
11 reason it’s not it’s
not as if it’s an appeal to the
12 district court because the district that
that’s
an
13 issue before the district court: What is the scope of
14 this patent; what does it cover? And the Patent Office
15 is telling you, well, it covers this, and the district
16 court says, thank you, I apply a different standard. I
17 think it covers this. And when that’s the case, it’s a
18 valid patent.
19 MR. GANNON: That’s correct. That could
20 happen. But if the claim has already been canceled, the
21 point is that if the if
the 22
JUSTICE SOTOMAYOR: Mr. Gannon, could you
23 give an example? I’m so
far I’m halfway with you.
24 If the PTO has canceled the patent, the lawsuit in the
25 district court ends.
1 MR. GANNON: Yes.
2 JUSTICE SOTOMAYOR: There’s nothing else for
3 it to do.
4 MR. GANNON: And 5
JUSTICE SOTOMAYOR: But let’s assume 6
MR. GANNON: But although the patent owner
7 in the meantime could have appealed to the Federal
8 circuit 9
JUSTICE SOTOMAYOR: Federal circuit and 10
MR. GANNON: and
determined 11
JUSTICE SOTOMAYOR: assuming
it loses in
12 the Federal circuit, the district court case has ended,
13 correct?
14 MR. GANNON: Well, if the patent is gone,
15 then then
they’re not going to be litigating about it
16 in district court.
17 JUSTICE SOTOMAYOR: All right. So what does
18 survive? Let’s assume the Patent Office decides that
19 the patent’s still alive. The loser goes up to the
20 Federal circuit, and the Federal circuit says this is
21 still a patent. They’ve given it a meaning of the
22 broadest possible meaning and said it’s still valid.
23 Now what happens in the district court? What’s still
24 alive? Give a concrete example.
25 MR. GANNON: Well

1 JUSTICE SOTOMAYOR: What’s going to happen
2 with in
the district court?
3 MR. GANNON: It it
4
JUSTICE SOTOMAYOR: Or what can happen in
5 the district court?
6 MR. GANNON: It in
the context of the
7 district court proceeding, I agree with the Chief
8 Justice that the district court may still find some
9 reason to think that if it’s not applying the
10 broadestreasonableconstruction
approach, that that
11 it it’s
going to end up in a different place, and
12 it’s not going to 13
JUSTICE SOTOMAYOR: How is it going to end
14 up in a different place?
15 MR. GANNON: Well, I’m not sure. In 16
JUSTICE SOTOMAYOR: Give me a concrete.
17 MR. GANNON: I I’m
not sure. I we
18 think that at the at
the margin, this can well make a
19 difference. But but
20
JUSTICE SOTOMAYOR: Well, it can only make a
21 differences for the district court finding the patent
22 invalid, no?
23 MR. GANNON: No. I don’t expect that it
24 would, because the problem here has to do it
it’s
25 the overly broad readings that are going to result in
1 having the patent be declared invalid with respect to
2 prior art. The what
exactly the claim construction
3 is could be relevant to other questions about whether it
4 reads on the the
particular product that’s at issue
5 in the infringement action or whatever. And so there’s
6 a reason why the claim construction issue could still be
7 a live one and why the district court would need to
8 decide what it thinks the appropriate claim construction
9 is, and it may it
won’t 10
JUSTICE SOTOMAYOR: Before you 11
MR. GANNON: be
bound to to
adopt 12
JUSTICE SOTOMAYOR: time
runs out 13
MR. GANNON: exactly
what the PTO did.
14 JUSTICE SOTOMAYOR: I
do want to go back
15 to the appealability issue.
16 MR. GANNON: Uhhuh.
17 JUSTICE SOTOMAYOR: Assuming I start from
18 the EEOC, the Mach Mining Mach
Mining v. EOC, which
19 we don’t easily think that Congress is intending to
20 prevent courts from enforcing its directives to Federal
21 agencies, okay?
22 Number two, this is a very specific statute
23 with steps about what when
and when not the PTO can
24 institute one of these reviews. There’s all sorts of
25 provisions that say you can only do it under these
1 circumstances and only after making these findings.
2 Your position now is that that decision is never
3 reviewable.
4 Justice Ginsburg asked a very intelligent
5 question, which is, if we what’s
the purpose of it
6 outside the APA? And your opposing colleague says
7 there’s two purposes: It precludes mandamus, and it
8 precludes reviews of the denial to grant such a hearing.
9 Why isn’t that all
of that enough to say
10 there should be some review? Why would Congress tell
11 the PTO don’t do it except in these limited
12 circumstances, but nobody’s going to ever watch you to
13 make sure that’s what you’re doing?
14 MR. GANNON: Well, I I’d
say a couple
15 things. First of all, calling something nonappealable
16 would be a particularly odd way of saying that the only
17 way to get review of this in the Federal circuit is
18 through an appeal rather than mandamus.
19 And secondly, with respect to the question
20 of whether this is just barring review of the decision
21 not to institute a proceeding, we think that the
22 contrast with the statute that applies to ex parte
23 reexams is is
very telling here. And this is because
24 in several provisions of the Patent Act, Congress has
25 used the same phrase. They have called certain
51
1 decisions by the PTO “final and nonappealable.” That’s
2 what they did here, but they they
made that
3 applicable to a much broader category of decisions than
4 it had previously done.
5 But in the context of ex parte reexams, in
6 Section 303(c), which is reprinted on Page 1a of the
7 government’s brief, they’ve made final and nonappealable
8 only the following: The determination by the director
9 that no substantial new question of patentability has
10 been raised.
11 And so that’s a provision in which Congress
12 did exactly what my friend says it was trying to do
13 here. It said that the only thing that is final and
14 nonappealable is the decision that no new question has
15 been raised, and therefore, this proceeding will not be
16 instituted.
17 Here, the 18
JUSTICE SOTOMAYOR: So what do we do with
19 the Federal circuit’s reading in Portola Portola
20
Portola where it basically had similar language and said
21 it’s appealable only at the end?
22 MR. GANNON: I we
we
think I’m
23
I’m not sure which case Your Honor is discussing, but we
24 think that here, the the
reading the
language
25 that of
the scope of what Congress has made final and
1 nonappealable is the entire decision whether to
2 institute an inter partes review under this section.
3 JUSTICE GINSBURG: Mr. Gannon, would you
4 look at the reply brief at page 19, and they give a
5 series of rulings that the Board might make that, under
6 your view, would be immune from any judicial review.
7 So the Board goes ahead and institutes an
8 IPR, even though the requester for that IPR has already
9 filed a parallel civil action, something that the
10 statute says should not happen. That would not be
11 reviewable, that wrong decision, under your view of it.
12 Is that 13
MR. GANNON: We we
think that they would
14 not be subject to an appeal. The court of appeals here
15 left open the possibility of mandamus, and we understand
16 why it did that. Because the phrase here is
17 “nonappealable,” that doesn’t necessarily rule out
18 mandamus.
19 We don’t think that it would make sense to
20 have mandamus only at the end of the proceeding. We
21 think that if mandamus were to happen, it should be the
22 way it would normally happen, at the time when the error
23 the
alleged error occurs, but it would be only
24 reserved for extraordinary circumstances.
25 The the
party would go immediately to the
1 Federal circuit and say, we have a clear and
2 indisputable entitlement to relief here because the
3 agency is violating the statutes. That’s something
4 where there’d be expedited briefing, where the P tab
5 would not have invested all the resources into getting
6 to a decision on the merits before a court pulled it
7 back and said, you never should have gotten there.
8 So we do think that there may be
9 circumstances that satisfy mandamus where there could be
10 review of the Board’s departure from statutory criteria,
11 but what Congress has spoken to here and made
12 nonappealable is the decision whether to institute
13 proceedings under the section. That’s not just a
14 determination of whether there’s a reasonable likelihood
15 under Subsection A, it’s everything. And that section
16 includes references to 311, to 313. It has at a
17 reference to a decision under this chapter.
18 And so all of that, we think, is included in
19 the scope of the appeal bar, and that distinguishes it
20 from a case like Mach Mining where the presumption
21 against reviewability had not been overcome or
the
22 presumption of favor of reviewability had not been
23 overcome. Here, Congress here clearly spoke to that.
24 JUSTICE GINSBURG: May I ask you a question
25 that relates to the other other
issue?
1 The district court holds that a patent is
2 valid. Could the the
PTO, on its own initiative,
3 then engage not in the inter partes review, but
4 reexamination? The district court says valid patent,
5 and PTO says, we want to, on our own, have a
6 reexamination.
7 MR. GANNON: Yes. The reexamination can be
8 instituted by the director at at
her own discretion
9 or or
by other persons. And in that proceeding, the
10 patentholder would be able to make any necessary
11 proposed amendments that it wanted to make under 305,
12 but the the
PTO wouldn’t necessarily approve those
13 amendments. It’s not going to be an unfettered right to
14 amend.
15 JUSTICE GINSBURG: So and
so it wouldn’t
16 so
the district court decision wouldn’t be
17 preclusive, and the the
PTO has the last word, then?
18 MR. GANNON: With respect to the ex parte
19 proceeding, yes.
20 CHIEF JUSTICE ROBERTS: Isn’t that an appeal
21 from the district court judgment to an administrative
22 agency?
23 MR. GANNON: It it’s
not an appeal from
24 the district court judgment. It’s a separate proceeding
25 before the agency that has ongoing authority to
1 reexamine the validity of patents that has been
2 issued that
it has issued. That’s the statutory
3 framework since 1980.
4 CHIEF JUSTICE ROBERTS: So so
the
5 district court reaches a judgment saying, you win based
6 on my reading of the patent, and then you can go to the
7 PTO and say, no, the reading of the patent of the
8 district court was wrong, so you lose?
9 MR. GANNON: Well, my understanding of
10 Justice Ginsburg’s hypothetical was that the the
11 director of the PTO could institute the reexamination
12 proceeding in in
light of issues that were revealed
13 for the time in the district court proceeding.
14 CHIEF JUSTICE ROBERTS: And then can the
15 losing party in the district court go back to the
16 district court, or if it’s on appeal, to the court of
17 appeals, and say the district court was wrong? The PTO
18 said that, and I should win.
19 MR. GANNON: They they
could say that.
20 If they already have a final judgment, then that’s not
21 going to be an issue. And depending on if the patent
22 has not actually been invalidated, then then
they’re
23 going to still be using the district court claim
24 construction in the judicial litigation.
25 CHIEF JUSTICE ROBERTS: Thank you, counsel.
1 Mr. Beeney, you have a minute left.
2 REBUTTAL ARGUMENT OF GARRARD R. BEENEY
3 ON BEHALF OF THE PETITIONER
4 MR. BEENEY: Thank you, Mr. Chief Justice.
5 Let me just begin by saying that as with the
6 government’s brief, we heard nothing today that suggests
7 that the use of the ordinaryclaim
construction would
8 not accomplish Congress’s purpose. But what we would
9 avoid is all of the bizarre harms that are caused by the
10 use of the broadestreasonableinterpretation
expedient.
11 We have different results, demonstrable different
12 results, as the Chief Justice pointed out. Many of the
13 cases are cited in our brief where a patent is upheld in
14 the district court and then invalidated by the Board.
15 That wouldn’t happen if we used the same
16 claim construction as Congress intended by having a
17 courtlike
system. We wouldn’t be depriving patent
18 owners of their property rights based on pretending the
19 patent means something that it doesn’t mean. Patent
20 rights should be taken away only if the patent that’s
21 claimed, that was granted, and that was issued is
22 unpatentable.
23 And that, Justice Kennedy, is why we
24 shouldn’t have speculation in IPR. They’re property
25 rights, and they should be treated as to what those
1 properties rights encompass.
2 Putting together the government’s position,
3 the government says BRI is, quote, “an examinational
4 expedient” used, quote, “before the patent issues” in,
5 quote, “an iterative process,” quote, “to provide
6 clarity and precision in claims.” That is not IPR.
7 The government the
Congress in enacting IPR got rid
8 of that examinational. They got rid of it.
9 Thank you very much.
10 CHIEF JUSTICE ROBERTS: Thank you, counsel.

11 The case is submitted.
12 (Whereupon, at 12:02 p.m., the
13 aboveentitled
matter was submitted.)
14
15
16
17
18
19
20
21
22
23
24
25

case in the

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fit 23:11 44:13,15,18,23 10:7 12:8 happening implicates 9:5
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institutes 52:7 35:22 43:2 44:12 33:23 34:4,10 large 37:12
instituting 3:14 interprets 40:22 55:2,2 56:21 35:13,14 36:8 late 9:19
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live 49:7 44:18 45:24 N.Y 1:19 32:22 36:6 10:2,11,24
LLC 1:3 56:19 narrow 27:21 obviously 9:12 17:25 21:22
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37:9,18 48:21 49:1 31:14 postgrant
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46:18,24 47:6 perfect 36:23 31:9 36:9 problem 32:12 proof 6:24 31:20
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proper 20:2 55:7,11,17 reach 22:6 21:3,8 29:13 27:16
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42:24 44:1,11 raised 18:3 2:8 56:2 8:11 25:3,7,11,14
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