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`LexisNexis®
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`CUOZZO SPEED TECHNOLOGIES, LLC, PETITIONER v. MICHELLE K. LEE,
`UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR, PATENT AND TRADEMARK OFFICE
`
`No.15-446.
`
`SUPREME COURT OF THE UNITED STATES
`
`195 L. Ed. 2d 423; 2016 U.S. LEXIS 3927; 84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA)
`1065; 26 Fla. L. Weekly Fed. S 278
`
`April25, 2016, Argued
`June 20, 2016, Decided
`
`NOTICE:
`
`The LEXIS pagination of this document is subject to
`change pending release of the final published version.
`
`[**1] ON WRIT OF
`PRIOR HISTORY:
`CERTIORARI TO THE UNITED STATES COURT OF
`APPEALS FOR THE FEDERAL CIRCUIT
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 2015
`U.S. App. LEXIS 11714 (Fed. Cir., 2015)
`
`DISPOSITION: Affirmed.
`
`SYLLABUS
`
`[*429] The Leahy-Smith America Invents Act
`creates an agency procedure called "inter partes review"
`that allows a third party to ask the U.S. Patent and
`to reexamine
`the claims
`in an
`Trademark Office
`already-issued patent and to cancel any claim that the
`agency finds to be unpatentable in light of prior art. The
`Act, as relevant here, provides that the Patent Office's
`decision "whether to institute an inter partes review ...
`shall be final and non-appealable," 35 U.S.C. §314(d),
`and grants
`the Patent Office authority
`to
`issue
`"regulations . . . establishing and governing inter partes
`review," §316(a)(4). A Patent Office regulation issued
`pursuant to that [*430] authority provides that, during
`
`inter partes review, a patent claim "shall be given its
`broadest
`reasonable construction
`in
`light of
`the
`specification of the patent in which it appears." 37 C.P.R.
`§42.100(b).
`
`In 2012, Garmin International, Inc., and Gannin
`USA, Inc., sought inter partes review of all 20 claims of a
`patent held by petitioner Cuozzo Speed Technologies,
`LLC, asserting, among other things, that claim 17 was
`obvious in light of three prior patents. The Patent Office
`agreed to review [**2] claim 17. It also decided to
`reexamine claims 10 and 14 on that same ground because
`it determined those claims to be logically linked to the
`obviousness challenge to claim 17. The Patent Office,
`through its Patent Trial and Appeal Board, concluded that
`the claims were obvious in light of prior art, denied for
`reasons of futility Cuozzo's motion to amend the claims,
`and canceled all three claims.
`
`Cuozzo appealed to the Federal Circuit. Cuozzo
`claimed that the Patent Office improperly instituted inter
`partes review with respect to claims 10 and 14, and it
`alleged that the Board improperly used the "broadest
`reasonable construction" standard to interpret the claims
`rather than the standard used by courts, which gives
`claims their "ordinary meaning ... as understood by a
`person of skill in the art," Phillips v. AWH Corp., 415 F.
`3d 1303, 1314. The Federal Circuit rejected both
`arguments. It reasoned that §314(d) made the Patent
`LG EXHIBIT 1022
`LG Electronics, Inc. & LG Electronics U.S A., Inc.
`v.
`Toshiba Samswzg Storage Technology Korea Corp.
`CASE IPR2015-01653
`
`

`
`195 L. Ed. 2d 423, *430; 2016 U.S. LEXIS 3927, **2;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***
`
`Page 2
`
`review
`inter partes
`Office's decision to institute
`"nonappealable," and it concluded that the Patent Office's
`regulation was a reasonable exercise of the agency's
`rulemaking authority.
`
`to apply the broadest reasonable construction standard to
`interpret patent claims is a reasonable exercise of the
`rulemaking authority granted to the Patent Office by
`statute. Pp. 12-20.
`
`Held:
`
`1. Section 314(d) bars Cuozzo's challenge to the
`Patent Office's decision to institute inter partes review.
`Pp. 7-12.
`
`(a) The text of §314(d) expressly [**3] states that
`the Patent Office's determinations whether to institute
`inter partes review "shall be final and nonappealable."
`Moreover, construing §314(d) to permit judicial review
`of the Patent Office's preliminary decision to institute
`inter partes review undercuts the important congressional
`objective of giving the agency significant power to revisit
`and revise earlier patent grants. Past practice in respect to
`related proceedings, including the predecessor to inter
`partes review, also supports the conclusion that Congress
`did not
`intend for courts
`to review these initial
`determinations. Finally, reading §314(d) as limited to
`interlocutory appeals would render the provision largely
`superfluous in light of the Administrative Procedure Act.
`Pp. 7-9.
`
`(b) The "strong presumption" favoring judicial
`review, Mach Mining, LLC v. EEOC, 575 U.S. ___, ___,
`135 S. Ct. 1645, 191 L. Ed. 2d 607, is overcome here by
`these "'clear and convincing'" indications that Congress
`intended to bar review, Block v. Community Nutrition
`Institute, 467 U.S. 340, 349, 104 S. Ct. 2450, 81 L. Ed. 2d
`270. Given that presumption, however, the interpretation
`adopted here applies to cases in which the challenge is to
`the Patent Office's determination "to initiate an inter
`partes review under this section," or where the challenge
`consists of questions closely tied to the application and
`[**4]
`interpretation
`of
`statutes
`related
`to
`that
`determination. Cuozzo's claim does not
`implicate a
`constitutional [*431] question, nor does it present other
`questions of interpretation that reach well beyond "this
`section" in terms of scope and impact. Rather, Cuozzo's
`allegation that Garmin's petition did not plead "with
`particularity" the challenge to claims 10 and 14 as
`required by §312 is little more than a challenge to the
`Patent Office's conclusion under §314(a)
`that
`the
`"information presented in the petition" warranted review.
`Pp. 9-12.
`
`2. The Patent Office regulation requiring the Board
`
`(a) Where a statute leaves a gap or is ambiguous, this
`Court
`typically interprets a congressional grant of
`rulemaking authority as giving the agency leeway to
`enact rules that are reasonable in light of the text, nature,
`and purpose of the statute. United States v. Mead Corp.,
`533 U.S. 218, 229, 121 S. Ct. 2164, 150 L. Ed. 2d 292;
`Chevron U.S.A. Inc. v. NRDC, 467 U.S. 837, 842-843,
`104 S. Ct. 2778, 81 L. Ed. 2d 694. Here, the statute grants
`the Patent Office the authority to issue regulations
`"governing inter partes
`review," and no statutory
`provision unambiguously mandates a particular claim
`construction standard. [**5]
`
`The Patent Office's rulemaking authority is not
`limited
`to
`procedural
`regulations. Analogies
`to
`interpretations
`of
`other
`congressional
`grants
`of
`rulemaking authority in other statutes, which themselves
`do not unambiguously contain a limitation to procedural
`rules, cannot magically render unambiguous the different
`language in the different statutory grant of rulemaking
`authority at issue.
`
`The nature and purpose of inter partes review does
`not unambiguously require the Patent Office to apply one
`particular
`claim construction
`standard. Cuozzo's
`contention that the purpose of inter partes review--to
`establish trial-like procedures for reviewing previously
`issued patents--supports the application of the ordinary
`meaning standard ignores the fact that in other significant
`respects,
`inter partes review is less like a judicial
`proceeding
`and more
`like
`a
`specialized
`agency
`proceeding. This indicates that Congress designed a
`hybrid proceeding. The purpose of inter partes review is
`not only to resolve patent-related disputes among parties,
`but also to protect the public's "paramount interest in
`seeing that patent monopolies . . . are kept within their
`legitimate scope." Precision Instrument Mfg. Co. v.
`Automotive Maintenance Machinery Co., 324 U.S. 806,
`816, 65 S. Ct. 993, 89 L. Ed. 1381, 1945 Dec. Comm'r
`Pat. 582. Neither the statute's language, [**6] nor its
`purpose, nor its legislative history suggests that Congress
`decided what standard should apply in inter partes
`review. Pp. 12-17.
`
`(b) The regulation is a reasonable exercise of the
`Patent Office's rulemaking authority. The broadest
`
`

`
`195 L. Ed. 2d 423, *431; 2016 U.S. LEXIS 3927, **6;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***
`
`Page 3
`
`reasonable construction standard helps ensure precision
`in drafting claims and prevents a patent from tying up too
`much knowledge, which, in turn, helps members of the
`public draw useful
`information from the disclosed
`invention and understand the lawful [*432] limits of the
`claim. The Patent Office has used this standard for more
`than 100 years and has applied it in proceedings which,
`as here, resemble district court litigation.
`
`Cuozzo's two arguments in response are unavailing.
`Applying the broadest reasonable construction standard
`in inter partes review is not, as Cuozzo suggests, unfair to
`a patent holder, who may move to amend at least once in
`the
`review process,
`and who
`has
`had
`several
`opportunities
`to amend in the original application
`process. And though the application of one standard in
`inter partes
`review and another
`in district
`court
`proceedings may produce inconsistent outcomes,
`that
`structure is inherent to Congress' regulatory design, and it
`[**7] is also consistent with past practice, as the patent
`system has long provided different tracks for the review
`and adjudication of patent claims. The Patent Office's
`regulation is reasonable, and this Court does not decide
`whether a better alternative exists as a matter of policy.
`Pp. 17-20.
`
`793 F. 3d 1268, affirmed.
`
`COUNSEL: Garrard R. Beeney argued the cause for
`petitioner.
`
`Curtis E. Gannon argued the cause for respondent.
`
`JUDGES: BREYER, J., delivered the opinion for a
`unanimous Court with respect to Parts I and III, and the
`opinion of the Court with respect to Part II, in which
`ROBERTS, C.
`J.,
`and KENNEDY, THOMAS,
`GINSBURG, and KAGAN, JJ., joined. THOMAS, J.,
`filed a concurring opinion. ALITO, J., filed an opinion
`concurring in part and dissenting in part,
`in which
`SOTOMAYOR, J., joined.
`
`OPINION BY: BREYER
`
`OPINION
`
`[***1068]
`JUSTICE BREYER delivered the
`opinion of the Court.
`
`The Leahy-Smith America Invents Act, 35 U.S.C.
`§100 et seq., creates a process called "inter partes
`
`review." That review process allows a third party to ask
`the U.S. Patent and Trademark Office to reexamine the
`claims in an already-issued patent and to cancel any
`claim that the agency finds to be unpatentable in light of
`prior
`art. See §102 (requiring "novel[ty]"); §103
`(disqualifying claims that are "obvious").
`
`We consider two provisions of the Act. The first
`says:
`
`"No Appeal.--The determination by the
`[**8]
`Director
`[of
`the Patent Office]
`whether to institute an inter partes review
`under
`this section shall be final and
`non-appealable." §314(d).
`
`Does this provision bar a court from considering whether
`the Patent Office wrongly "determin[ed] . . . to institute
`an inter partes review," ibid., when it did so on grounds
`not specifically mentioned in a third party's review
`request?
`
`The second provision grants the Patent Office the
`authority to issue
`
`. establishing and
`.
`"regulations .
`governing inter partes review under this
`chapter." §316(a)(4).
`
`Does this provision authorize the Patent Office to issue a
`regulation stating that the agency, in inter partes review,
`"shall [construe a patent claim according
`to] its broadest reasonable construction in
`light of the specification of the patent in
`which it appears"? 37 C.F.R. §42.100(b)
`(2015).
`
`We conclude that the first provision, though it may
`not bar consideration [*433] of a constitutional question,
`for example, does bar judicial review of the kind of
`mine-run claim at
`issue here,
`involving the Patent
`Office's decision to institute inter partes review. We also
`conclude that the second provision authorizes the Patent
`Office to issue the regulation before us. See, e.g., United
`States v. Mead Corp., 533 U.S. 218, 229, 121 S. Ct. 2164,
`150 L. Ed. 2d 292 (2001); Chevron U.S.A. Inc. v. NRDC,
`467 U.S. 837, 842, 104 S. Ct. 2778, 81 L. Ed. 2d 694
`(1984).
`
`I
`
`

`
`195 L. Ed. 2d 423, *433; 2016 U.S. LEXIS 3927, **8;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***1068
`
`Page 4
`
`A
`
`An inventor obtains a patent by applying [**9]
`to
`the Patent Office. A patent examiner with expertise in the
`relevant
`field reviews an applicant's patent claims,
`considers the prior art, and determines whether each
`claim meets the applicable patent law requirements. See,
`e.g., 35 U.S.C. §§101, 102, 103, 112. Then, the examiner
`accepts a claim, or rejects it and explains why. See
`§132(a).
`
`If the examiner rejects a claim, the applicant can
`resubmit a narrowed (or otherwise modified) claim,
`which the examiner will consider anew, measuring the
`new claim against the same patent law requirements. If
`the examiner rejects the new claim, the inventor typically
`has yet another chance to respond with yet another
`amended claim. Ultimately, the Patent Office makes a
`final decision allowing or rejecting the application. The
`applicant may seek judicial review of any final rejection.
`See §§141(a), 145.
`
`the Patent Office has also
`For several decades,
`possessed the authority to reexamine--and perhaps
`cancel--a patent claim that it had previously allowed. In
`1980, for example, Congress enacted a statute providing
`for "ex parte reexamination." Act to Amend the Patent
`and Trademark Laws, 35 U.S.C. §301 et seq. That statute
`(which remains in effect) gives "[a]ny person at any
`[**10]
`time"
`the
`right
`to
`"file
`a
`request
`for
`reexamination" on the basis of certain prior art "bearing
`on the patentability" of
`an already-issued patent.
`§§301(a)(1), 302. If the Patent Office concludes that the
`[***1069] new
`cited prior art raises "a substantial
`question of patentability," the agency can reexamine the
`patent. §303(a). And that reexamination can lead the
`Patent Office to cancel the patent (or some of its claims).
`Alternatively, the Director of the Patent Office can, on
`her "own initiative," trigger such a proceeding. Ibid. And,
`as with examination, the patent holder can seek judicial
`review of an adverse final decision. §306.
`
`In 1999 and 2002, Congress enacted statutes that
`established another, similar procedure, known as "inter
`partes
`reexamination." Those statutes granted third
`parties greater opportunities to participate in the Patent
`Office's reexamination proceedings as well as in any
`appeal of a Patent Office decision. See, e.g., American
`Inventors Protection Act of 1999, §297 et seq. (2006 ed.)
`(superseded).
`
`In 2011, Congress enacted the statute before us. That
`statute modifies "inter partes reexamination," which it
`now calls "inter partes review." See H. R. Rep. No.
`112-98, pt. 1, pp. 46-47 (2011) (H. R. Rep.). Like inter
`partes reexamination, any third [**11] party can ask the
`agency to initiate inter partes review of a patent claim.
`But the new statute has changed the standard that governs
`[*434]
`the Patent Office's
`institution of the agency's
`process.
`Instead of
`requiring that
`a
`request
`for
`reexamination raise a "substantial new question of
`patentability," it now requires that a petition show "a
`reasonable
`likelihood that"
`the
`challenger
`"would
`prevail." Compare §312(a) (2006 ed.) (repealed) with
`§314(a) (2012 ed.).
`
`The new statute provides a challenger with broader
`participation rights. It creates within the Patent Office a
`Patent Trial and Appeal Board (Board) composed of
`administrative patent judges, who are patent lawyers and
`former patent examiners, among others. §6. That Board
`conducts the proceedings, reaches a conclusion, and sets
`forth its reasons. See ibid.
`
`The statute sets forth time limits for completing this
`review. §316(a)(11). It grants the Patent Office the
`authority to issue rules. §316(a)(4). Like its predecessors,
`the statute authorizes judicial review of a "final written
`decision" canceling a patent claim. §319. And, the statute
`says that the agency's initial decision "whether to institute
`an inter partes review" is "final and nonappealable."
`§314(d); compare ibid. with [**12] §§312(a), (c) (2006
`ed.) (repealed) (the "determination" that a petition for
`inter partes reexamination "raise[s]" "a substantial new
`question of patentability" is "final and non-appealable"),
`and §303(c) (2012 ed.) (similar in respect to ex parte
`reexamination).
`
`B
`
`In 2002, Giuseppe A. Cuozzo applied for a patent
`covering a speedometer that will show a driver when he
`is driving above the speed limit. To understand the basic
`idea, think of the fact that a white speedometer needle
`will look red when it passes under a translucent piece of
`red glass or the equivalent (say, red cellophane). If you
`attach a piece of red glass or red cellophane to a
`speedometer beginning at 65 miles per hour, then, when
`the white needle passes that point, it will look red. If we
`attach the red glass to a plate that can itself rotate, if we
`attach the plate to the speedometer, if we connect the
`plate to a Global Positioning System (GPS) receiver, and
`
`

`
`195 L. Ed. 2d 423, *434; 2016 U.S. LEXIS 3927, **12;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***1069
`
`Page 5
`
`if we enter onto a chip or a disk all the speed limits on all
`the Nation's roads, then the GPS can signal where the car
`is, the chip or disk can signal the speed limit at that place,
`and the plate can rotate to the right number on the
`speedometer. Thus, if the speed limit is 35 miles per
`[**13] hour, then the white speedometer needle will pass
`under the red plate at 35, not 65, and the driver will know
`if he is driving too fast.
`
`In 2004, the Patent Office granted the patent. See
`U.S. Patent No. 6,778,074 (Cuozzo Patent). The
`Appendix contains excerpts from this patent, offering a
`less simplified (and more technical) description.
`
`C
`
`Speed Technologies, LLC
`Petitioner Cuozzo
`(Cuozzo), now holds the rights to the Cuozzo Patent. In
`2012, Garmin International, Inc., and Garmin USA, Inc.,
`filed a petition seeking inter partes review of the Cuozzo
`Patent's 20 claims. Garmin backed up its request by
`stating, for example, that the invention described in claim
`17 was obvious in light of three prior patents,
`the
`Aumayer, Evans, and Wendt patents. U.S. Patent No.
`6,633,811; U.S. Patent No. 3,980,041; and U.S. Patent
`No. 2,711,153. [*435] Cf. Goodyear Tire & Rubber Co.
`v. Ray-O-Vac Co., 321 U.S. 275, 280, 64 S. Ct. 593, 88 L.
`Ed. 721, 1944 Dec. Comm'r Pat. 657 (1944) (Black, J.,
`[***1070]
`dissenting)
`("[S]omeone,
`somewhere,
`sometime, made th[is] discovery [but] I cannot agree that
`this patentee is that discoverer").
`
`The Board agreed to reexamine claim 17, as well as
`claims 10 and 14. The Board recognized that Garmin had
`not expressly challenged claim 10 and claim 14 on the
`same obviousness ground. But, believing that "claim 17
`depends on claim 14 which depends on claim 10," the
`Board reasoned that Garmin had "implicitly" [**14]
`challenged claims 10 and 14 on the basis of the same
`prior inventions, and it consequently decided to review
`all three claims together. App. to Pet. for Cert. 188a.
`
`After proceedings before the Board, it concluded that
`claims 10, 14, and 17 of the Cuozzo Patent were obvious
`in light of the earlier patents to which Garmin had
`referred. The Board explained that the Aumayer patent
`"makes use of a GPS receiver to determine .
`.
`. the
`applicable speed limit at that location for display," the
`Evans patent "describes a colored plate for indicating the
`speed limit," and the Wendt patent "describes us[ing] a
`rotatable pointer for indicating the applicable speed
`
`limit." Id., at 146a-147a. Anyone, the Board reasoned,
`who is "not an automaton"--anyone with "ordinary skill"
`and
`"ordinary
`creativity"--could
`have
`taken
`the
`automated approach suggested by the Aumayer patent
`and applied it
`to the manually adjustable signals
`described in the Evans and Wendt patents. Id., at 147a.
`The Board also concluded that Cuozzo's proposed
`amendments would not cure this defect, id., at 164a-166a,
`and it consequently denied Cuozzo's motion to amend its
`claims. Ultimately, it ordered claims 10, 14, and 17 of the
`Cuozzo Patent canceled, id., at 166a.
`
`Cuozzo appealed to [**15] the United States Court
`of Appeals for the Federal Circuit. Cuozzo argued that
`the Patent Office improperly instituted inter partes
`review, at least in respect to claims 10 and 14, because
`the agency found that Garmin had only implicitly
`challenged those two claims on the basis of the Aumayer,
`Evans, and Wendt patents, while the statute required
`petitions to set forth the grounds for challenge "with
`particularity." §312(a)(3). Cuozzo also argued that the
`Board, when construing the claims, improperly used the
`interpretive standard set forth in the Patent Office's
`regulation (i.e.,
`it gave those claims their "broadest
`reasonable construction," 37 C.F.R. §42.100(b)), when it
`should have applied the standard that courts normally use
`when judging a patent's validity (i.e., it should have given
`those claims their "ordinary meaning . . . as understood
`by a person of skill in the art," Phillips v. AWH Corp.,
`415 F. 3d 1303, 1314 (CA Fed. 2005) (en banc)).
`
`A divided panel of the Court of Appeals rejected
`both arguments. First, the panel majority pointed out that
`35 U.S.C. §314(d) made the decision to institute inter
`partes review "nonappealable." In re Cuozzo Speed
`Technologies, LLC, 793 F. 3d 1268, 1273 (CA Fed.
`2015) (internal quotation marks omitted). Second, the
`panel majority affirmed the application of the broadest
`reasonable construction standard on the ground [**16]
`(among others) that the regulation was a reasonable, and
`[*436] exercise of the Patent Office's
`hence lawful,
`statutorily
`granted
`rulemaking
`authority.
`Id.,
`at
`1278-1279; see §316(a)(4). By a vote of 6 to 5, the Court
`of Appeals denied Cuozzo's petition for rehearing en
`banc. In re Cuozzo Speed Technologies, LLC, 793 F. 3d
`1297, 1298 (CA Fed. 2015).
`
`We granted Cuozzo's petition for certiorari to review
`these two questions.
`
`II
`
`

`
`195 L. Ed. 2d 423, *436; 2016 U.S. LEXIS 3927, **16;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***1070
`
`Page 6
`
`Like the Court of Appeals, we believe that Cuozzo's
`contention that the Patent Office unlawfully initiated its
`agency review is not appealable. For one thing, that is
`what §314(d) says. It states that the "determination by the
`[Patent Office] whether to institute an inter partes review
`under this section shall be final and nonappealable."
`(Emphasis added.)
`
`For another, the legal dispute at issue is an ordinary
`dispute about the application of certain relevant patent
`statutes concerning the Patent Office's decision to
`institute inter partes review. Cuozzo points to a related
`statutory section, §312, which says that petitions must be
`pleaded "with particularity." Those words, in its view,
`mean that the petition should have specifically said that
`claims 10 and 14 are also obvious in light of this same
`prior art. Garmin's petition, the Government replies, need
`not have mentioned [**17] claims 10 and 14 separately,
`for claims 10, 14, and 17 are all logically linked; the
`claims "rise and fall together," and a petition need not
`simply [***1071]
`repeat the same argument expressly
`when it is so obviously implied. See 793 F. 3d, at 1281.
`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).
`
`Moreover, a contrary holding would undercut one
`important congressional objective, namely, giving the
`Patent Office significant power to revisit and revise
`earlier patent grants. See H. R. Rep., at 45, 48 (explaining
`that
`the statute seeks to "improve patent quality and
`restore confidence in the presumption of validity that
`comes with issued patents"); 157 Cong. Rec. 9778 (2011)
`(remarks of Rep. Goodlatte) (noting that
`inter partes
`review "screen[s] out bad patents while bolstering valid
`ones"). We doubt that Congress would have granted the
`Patent Office this authority, including, for example, the
`ability to continue proceedings even after the original
`petitioner settles and drops out, §317(a), if it had thought
`that the agency's final decision could be unwound under
`some minor statutory technicality [**18]
`related to its
`preliminary decision to institute inter partes review.
`
`Further, the existence of similar provisions in this,
`and related, patent statutes reinforces our conclusion. See
`§319 (limiting appellate review to the "final written
`decision");
`(2006
`ed.)
`(repealed)
`(the
`§312(c)
`"determination"
`that
`a
`petition
`for
`inter
`partes
`reexamination "raise[s]" a "substantial new question of
`
`patentability" is "final and non-appealable"); see also
`§303(c) (2012 ed.); In re Hiniker Co., 150 F. 3d 1362,
`1367 (CA Fed. 1998) ("Section 303 . . . is directed toward
`the
`[Patent Office's]
`authority
`to
`institute
`a
`reexamination, and there is no provision granting us
`direct review of that decision").
`
`[*437]
`in the
`The dissent, like the panel dissent
`Court of Appeals, would limit
`the scope of the "No
`Appeal" provision to interlocutory appeals,
`leaving a
`court free to review the initial decision to institute review
`in the context of the agency's final decision. Post, at 1, 5
`(ALITO, J., concurring in part and dissenting in part);
`793 F. 3d, at 1291 (Newman, J., dissenting). We cannot
`accept this interpretation. It reads into the provision a
`limitation (to interlocutory decisions) that the language
`nowhere mentions
`and that
`is unnecessary. The
`Administrative Procedure Act already limits review to
`final agency decisions. 5 U.S.C. §704. The Patent [**19]
`Office's decision to initiate inter partes
`review is
`"preliminary," not "final." Ibid. And the agency's decision
`to deny a petition is a matter committed to the Patent
`Office's discretion. See §701(a)(2); 35 U.S.C. §314(a)
`(no mandate to institute review); see also post, at 9, and
`n. 6. So,
`read as limited to such preliminary and
`discretionary decisions, the "No Appeal" provision would
`seem superfluous. The dissent also suggests that
`its
`approach is a "familiar practice," consistent with other
`areas of
`law. Post, at 8. But
`the kind of
`initial
`determination at issue here--that there is a "reasonable
`likelihood" that
`the claims are unpatentable on the
`grounds asserted--is akin to decisions which, in other
`contexts, we have held to be unreviewable. See Kaley v.
`United States, 571 U.S. ___, ___, 134 S. Ct. 1090, 1098,
`188 L. Ed. 2d 46, 56 (2014) ("The grand jury gets to
`say--without
`any
`review,
`oversight,
`or
`second-guessing--whether probable cause exists to think
`that a person committed a crime").
`
`We recognize the "strong presumption" in favor of
`judicial review that we apply when we interpret statutes,
`including statutes that may limit or preclude review.
`Mach Mining, LLC v. EEOC, 575 U.S. ___, ___, 135 S.
`Ct. 1645, 191 L. Ed. 2d 607 (2015) (internal quotation
`marks omitted). This presumption, however, may be
`overcome by "'clear and convincing'" indications, drawn
`from "specific language," "specific [**20]
`legislative
`history," and "inferences of
`intent drawn from the
`statutory scheme as a whole," that Congress intended to
`bar review. Block v. Community Nutrition Institute, 467
`
`

`
`195 L. Ed. 2d 423, *437; 2016 U.S. LEXIS 3927, **20;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***1071
`
`Page 7
`
`U.S. 340, 349-350, 104 S. Ct. 2450, 81 L. Ed. 2d 270
`(1984). That standard is met here. The dissent disagrees,
`and it points
`to Lindahl v. Office of Personnel
`Management, 470 U.S. 768, 105 S. Ct. 1620, 84 L. Ed. 2d
`674 (1985), to support its view that, in light of this
`presumption, §314(d) should be read to permit judicial
`review of any issue bearing on the Patent Office's
`preliminary decision to institute inter partes review. See
`post, at 4-5. Lindahl is a case about the judicial review of
`disability determinations for
`federal employees. We
`explained that a statute directing the Office of Personnel
`Management to "'determine questions of disability,'" and
`making
`those
`decisions
`"'final,'"
`"'conclusive,'"
`[***1072] and "'not subject to review,'" barred a court
`from revisiting the "factual underpinnings of
`.
`.
`.
`disability determinations"--though it permitted courts to
`consider claims alleging, for example, that the Office of
`Personnel Management "'substantial[ly] depart[ed] from
`important procedural rights.'" 470 U.S., at 771, 791, 105
`S. Ct. 1620, 84 L. Ed. 2d 674. Thus, Lindahl's
`[*438]
`interpretation of
`that
`statute preserved the
`agency's primacy over its core statutory function in
`accord with Congress' intent. Our interpretation of the
`"No Appeal" provision here has
`the same effect.
`Congress has told the Patent [**21] Office to determine
`whether inter partes review should proceed, and it has
`made the agency's decision "final" and "nonappealable."
`§314(d). Our conclusion that courts may not revisit this
`initial determination gives effect
`to this
`statutory
`command. Moreover, Lindahl's conclusion was consistent
`with prior judicial practice in respect to those factual
`agency determinations, and legislative history "strongly
`suggest[ed]" that Congress intended to preserve this prior
`practice. Id., at 780, 105 S. Ct. 1620, 84 L. Ed. 2d 674.
`These features, as explained above, also support our
`interpretation: The text of the "No Appeal" provision,
`along with its place in the overall statutory scheme, its
`role alongside the Administrative Procedure Act,
`the
`prior
`interpretation of
`similar patent
`statutes, and
`Congress' purpose in crafting inter partes review, all point
`in favor of precluding review of the Patent Office's
`institution decisions.
`
`Nevertheless, in light of §314(d)'s own text and the
`presumption favoring review, we emphasize that our
`interpretation applies 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 [**22]
`to initiate inter partes review. See
`
`§314(d) (barring appeals of "determinations . . . to initiate
`an inter partes review under this section" (emphasis
`added)). This means that we need not, and do not, decide
`the precise effect of §314(d) on appeals that implicate
`constitutional questions, that depend on other less closely
`related statutes, or
`that present other questions of
`interpretation that reach, in terms of scope and impact,
`well beyond "this section." Cf. Johnson v. Robison, 415
`U.S. 361, 367, 94 S. Ct. 1160, 39 L. Ed. 2d 389 (1974)
`(statute precluding review of "any question of law or fact
`under
`any
`law administered
`by
`the Veterans'
`Administration" does not bar review of constitutional
`challenges (emphasis deleted and internal quotation
`marks omitted)); Traynor v. Turnage, 485 U.S. 535,
`544-545, 108 S. Ct. 1372, 99 L. Ed. 2d 618 (1988) (that
`same statute does not bar review of decisions made under
`different statutes enacted at other times). Thus, contrary
`to the dissent's suggestion, we do not categorically
`preclude review of a final decision where a petition fails
`to give "sufficient notice" such that there is a due process
`problem with the entire proceeding, nor does our
`interpretation enable the agency to act outside its
`statutory limits by, for example, canceling a patent claim
`for "indefiniteness under §112" in inter partes review.
`Post, at 10-13. Such "shenanigans" [**23] may be
`properly reviewable in the context of §319 and under the
`Administrative Procedure Act, which enables reviewing
`courts to "set aside agency action" that is "contrary to
`constitutional right," "in excess of statutory jurisdiction,"
`or "arbitrary [and] capricious." Compare post, at 13, with
`5 U.S.C. §§706(2)(A)-(D).
`
`By contrast, where a patent holder merely challenges
`the Patent Office's "determin[ation] that the information
`presented in the petition .
`.
`. shows that
`there is a
`reasonable [*439] likelihood" of success "with respect
`to at least 1 of the claims challenged," §314(a), or where
`a patent holder grounds its claim in a statute closely
`related to that decision to institute inter partes review,
`§314(d) bars judicial review. In this case, Cuozzo's claim
`that Garmin's
`petition was
`not
`pleaded
`"with
`particularity" under §312 is little more than a challenge to
`the Patent Office's conclusion, under §314(a), that the
`"information presented in the petition" warranted review.
`Cf. United States v. Williams, 504 U.S. 36, 54, 112 S. Ct.
`1735, 118 L. Ed. 2d 352 (1992) ("A complaint about the
`quality or adequacy of the evidence can always be recast
`as a complaint that the . . . presentation was 'incomplete'
`or 'misleading'"). We therefore conclude that §314(d)
`bars Cuozzo's efforts to attack the Patent Office's
`
`

`
`195 L. Ed. 2d 423, *439; 2016 U.S. LEXIS 3927, **23;
`84 U.S.L.W. 4438; 119 U.S.P.Q.2D (BNA) 1065, ***1072
`
`Page 8
`
`determination to institute inter partes [**24]
`this case.
`
`review in
`
`III
`
`Cuozzo further argues that the Patent Office lacked
`the legal authority to issue its regulation