Whether courts may review an agency's ruling on the multiple-proceedings rule under 35 U.S.C. § 325(d)

QUESTIONS PRESENTED In 2000, the United States Patent Office (PTO) examined and granted U.S. Patent No. 6,158,011. Over the next 16 years, the ’011 Patent produced some $22-million in infringement and licensing revenue. During that same time, the patent withstood scrutiny from nine PTO and judicial reviews challenging the patent’s validity. This included three PTO reexaminations, two PTO de novo reviews of those reexaminations, a district court jury verdict and judgment, and a 2014 precedential Federal Circuit decision. In 2015, Petitioner SSL sued Respondent Cisco for infringing the ’011 Patent. Cisco responded by filing a request for inter partes review (IPR) at the PTO, using the same prior art that the patent had already repeatedly overcome in those prior reviews. Yet, instead of denying Cisco’s request as duplicative and barred by the rule, 35 U.S.C. § 325(d), the PTO decided to review the patent once more—the tenth review of the 011 Patent’s validity. The PTO compounded this error by thereafter incorrectly concluding what none of the other nine prior PTO or judicial reviews had: that the ’011 Patent was invalid as obvious over this previously presented and rejected prior art. In refusing to apply § 325(d), the PTO emphasized that Cisco was not the same party that had prompted the PTO’s prior reviews. But this ruling contravened the statute’s text and structure, as well as Congress’s intent. Congress did not limit § 325(d) to blocking the same party from launching multiple ii validity challenges to the same patent—rather, § 325(d) applies so long as the “same or substantially the same prior art or arguments were previously presented to the [PTO].” And other related provisions in the statute address and estop the same party from doing so. See, 35 U.S.C. §§ 315(e), 325(e). More broadly, in enacting provisions like § 325(d), Congress proclaimed that it did not want IPRs “to be used as tools for harassment ... through repeated litigation and administrative attacks on the validity of a patent.” H.R. Rep. No. 98 Pt. 1, 112th Cong., 1st. Sess. at 48 (2011). That is this case. Nonetheless, the Federal Circuit declined to review the PTO’s § 325(d) ruling. The court did so even though the PTO has applied this rule incorrectly and inconsistently in numerous other cases. The Federal Circuit also did so despite this Court’s recent holding that PTO institution decisions like these are judicially reviewable under 35 U.S.C. § 314(d) if the challenge thereto does not require evaluating the merits of an IPR petition’s invalidity theory. And § 325(d) requires no such merits analysis; as noted, it asks whether the “same or substantially the same prior art or arguments were previously presented to the [PTO].” Thus, the Federal Circuit not only mistakenly declined to review the PTO’s § 325(d) ruling, but also left its own standard for whether it will review such institution rulings both divided and uncertain. The PTO’s and Federal Circuit’s failure to follow the law here undermines one of the bedrock elements of our patent system: predictability. And in turn, this unpredictability puts at risk the incentive to innovate that the system has protected and iii spurred since our Nation’s inception. In short, if these rulings stand, it will frustrate the constitutional goals of the patent system. See U.S. CONST., Art. I, § 8 (“To promote the progress of science and useful arts .”). The questions presented are: 1. Whether courts may review an agency’s ruling on whether the § 325(d) rule applies and bars an IPR’s institution when (1) the analysis of whether that rule applies does not require an evaluation of the IPR’s invalidity merits; and (2) § 325(d) specifies criteria for the rule’s application, viz., that a prior PTO proceeding presented the “same or substantially the same prior art or arguments” as those in the IPR petition. 2. Whether the Board erred in instituting an IPR notwithstanding 35 U.S.C. § 325(d) when (1) the same or substantially