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Hastings Science and Technology Law Journal

Abstract

The Court of Appeals for the Federal Circuit (Federal Circuit) hears appeals from the United States Patent & Trademark Office (PTO). Recently, the American Invents Act expanded the PTO’s power in the patent world by creating new types of proceedings, including Inter Partes Review (IPR), by which one may challenge the validity of a patent. To determine the validity of patent claims in IPR proceedings, the PTO must first perform claim construction. As an administrative agency, the decisions of the PTO (such as claim construction) should be accorded significant deference by way of the Administrative Procedure Act (APA). In the first ever appeal from an IPR proceeding, In Re Cuozzo Speed Technologies, the Federal Circuit reviewed the PTO's claim construction according to the standard of review applicable to district courts (the Teva standard). This Note argues that the PTO's claim construction should have been reviewed according to the standard of review applicable to agencies (under the APA), not the standard of review applicable to district courts (the Teva standard). The Note then provides a detailed analysis of what the standard of review for PTO claim construction should be under the APA. This Note concludes that for questions of fact (e.g., disputes over the meaning of extrinsic evidence), the appropriate standard of review is the substantial evidence standard; for questions

of law (e.g., interpreting the PTO's Broadest Reasonable Interpretation standard), the appropriate standard of review should usually be the Auer “clearly erroneous” standard; finally, for mixed questions applying the law to the facts (e.g., the ultimate claim construction), the appropriate standard of review is the “arbitrary and capricious” standard. Importantly, the standard of review for the ultimate claim construction is the arbitrary and capricious standard, which is much more deferential than the de novo standard currently being applied by the Federal Circuit.

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