In Re Cuozzo Speed Technologies, LLC

Co., 1283, 616 F.3d Costs are Perrigo Papst. Inc. v. awarded to (“A (Fed.Cir.2010) claim construction that AND VACATED REMANDED. preferred embodiment ‘is excludes ever, rarely, require if correct and would evidentiary support.’”

highly persuasive

(citation omitted)). undermining

Further the construction of

“customary “normally in a host device” as commercially in the chassis of most

found computers” is the fact that the available In re CUOZZO SPEED description equate written does not “host TECHNOLOGIES, “computer.” contrary, device” with To the LLC. description uses the words “host de No. 2014-1301.

vice,” systems,” “computer,” “host and systems” or inter “computer more less United States Court of Appeals, See, 1, e.g., changeably. patent, '399 col. Federal Circuit. (“host computer sys

lines 20-21 devices or 4, Feb. tems are attached means of an interface id., device”); (describing to a lines 49-50 measuring

an “electronic device ... at computer system”);

tached to a id. col. (referring systems”

lines 1-7 to “host

“computer systems”); id. col. line (alternating

col. line between “host

device,” systems,” “computer sys “host

tem,” “computer”); col. 1- id. lines (similar). Even if we were to conclude phrase “customary conveys

that the in” location, therefore,

physical the district

court was to conclude that wrong phys computer

ical location be inside a must Techs.,

chassis. See Pickholtz v. Rainbow

Inc., (Fed.Cir.2002) 1365, 1373-74

(construing computer” “located in the CPU, memory,

mean “located in the main boards, memory

the CPU or main circuit qualifying peripherals” based on the description’s repeated

written use of “com system”

puter” “computer inter

changeably).

Conclusion reasons,

For the foregoing we vacate the entry judgment

district court’s of final

remand proceedings for further consistent

with this opinion.

timely finding issued final decision 10, 14, obvious. The Board addi- tionally denied motion to Cuozzo’s amend patent by substituting the '074 new claims 10, 14, 23 for claims contention, Contrary to we Cuozzo’s jurisdiction hold that we lack to review the PTO’s decision to institute IPR. We affirm determination, finding the Board’s final no error the Board’s claim construction interpreta- under the broadest reasonable standard, the Board’s de- obviousness termination, and the Board’s denial of Cuozzo’smotion to amend.

Background assignee pat- Cuozzo is the of the '074 ent, “Speed entitled Limit Indicator and Timothy Salmon, Speed M. Cuozzo Speed Method for Displaying and the Rel- LLC, NJ, Technologies, Basking Ridge, Limit,” Speed evant which issued on Au- argued appellant. for Of counsel on the gust 2004. The '074 discloses Kasha, R. Kasha Law brief was John displays interface which a vehicle’s cur- LLC, Potomac, MD. of North speed speed rent as well as the limit. Solicitor, Kelley,

Nathan K. United embodiment, one a superim- red filter is Office, States Patent and Trademark of posed on a speedometer white so that Alexandria, VA, argued for intervenor. “speeds legal speed limit above are himWith on the brief were Scott C. Weid- displayed legal in red ... while the speeds ” McManus, J. enfeller and Robert Associate displayed white.... Id. col. 5 Solicitors. 35-37. A global positioning system (“GPS”) unit tracks the vehicle’s location NEWMAN, CLEVENGER, Before and speed and identifies the limit at that loca- DYK, Judges. Circuit tion. automatically The red filter rotates speed when the limit changes, so that the Opinion for the court filed Circuit Judge speeds speed above the limit at that loca- Dissenting opinion DYK. filed Judge displayed Circuit NEWMAN. tion are red. The also speed may states that the limit indicator DYK, Judge. Circuit liquid crystal take the form of a colored (“Cuozzo”) Speed Technologies (“LCD”). 4-6, display Id. col. 3 11. col. 6 11. (the 6,778,074 owns U.S. Patent No. “'074 11-14. In claim independent International, patent”). Inc. Garmin here, a display issue colored shows the “Garmin”) USA, (collectively, Garmin Inc. limit, speed current and the colored dis- petitioned the United States Patent and “integrally play speed- attached” to the (“PTO”) Trademark Office partes inter col. ometer. Id. 71.10. (“IPR”) 10, 14, review of claims Claim 10 recites: the '074 patent. granted The PTO Gar- A speed comprising: limit indicator petition min’s and instituted IPR. Pat- (the “Board”) receiver; Appeal system ent Trial and Board a global positioning display controller connected to said Evans or Wendt for claim 10 or Wendt for receiver, system global positioning claim 14. adjusts controller display wherein said subsequent decision, In its final display response sig- a colored Board explained that appropriate “[a]n global positioning sys- nals from said construction ‘integrally of the term at- continuously update tem receiver to in independent tached’ claim 10 is central speed the delineation of which read- patentability analysis of claims speed limit ings are violation 14, and 17.” J.A. 7. The Board applied a location; present at a vehicle’s interpretation broadest stan- speedometer integrally attached to dard and construed the “integrally term display. colored said meaning attached” as parts phys- “discrete col. 711.1-10. 14 is

Id. Claim addressed ically joined together a unit without speed limit indicator as defined in “[t]he part losing each separate identity.” its own display claim wherein said colored is a J.A. 9. The Board found that claims Id', colored filter.” col. 7 11.23-24. Claim unpatentable and 17 were as obvious under limit speed 17 recites: indicator as “[t]he 103(1) Evans, Aumayer, U.S.C. over display defined in claim wherein said (2) Wendt; and, alternatively, over controller rotates said colored filter inde- Awada, Evans, Tegethoff, and Wendt. pendently speedometer to continu- said ously update the delineation of which The Board also denied Cuozzo’s motion in speed readings are violation of the patent by to amend the replacing claims limit at a speed present vehicle’s location.” 10, 14, 21, 22, and 17 with substitute claims col. 11. Id. 5-9. and 23. The Board’s denial of the motion 16, 2012, September a On Garmin filed proposed to amend centered on claim 21.1 of, petition with the PTO to institute IPR Claim 21 would have amended the alia, 10, 14, inter and 17 the '074 speedometer integrally to claim “a at- patent. Garmin contended that claim 10 display, tached to colored wherein the [a] anticipated was invalid as under 35 U.S.C. speedometer comprises liquid crystal dis- 102(e) § or as obvious under 35 U.S.C. play, and wherein the colored display is 103(a) § and that claims 14 and 17 were liquid crystal display.” J.A. 357-58. 103(a). § obvious under The PTO institut- rejected Board amendment be- IPR, determining ed that there awas rea- (1) claim 21 cause substitute lacked written sonable likelihood that claims description support required by as (1) § 17 were obvious under 103 over U.S. (2) § U.S.C. the substitute claims 6,633,811 3,980,- (“Aumayer”), Patent Nos. improperly enlarge scope would of the (“Evans”), 2,711,153 (“Wendt”); by claims as construed Board. (2) German Patent No. 197 55 470 and/or intervened, appealed. Cuozzo 6,515,596 (“Tegethoff’), U.S. Patent No. (“Awada”), Evans, granted and we Garmin’s motion to with- Although and Wendt. appellee.2 jurisdiction draw as petition respect Garmin’s with to claim 17 We have grounds included the on which the PTO review the Board’s final decision under 28 1295(a)(4)(A). review, § petition instituted did not list U.S.C. parties separately

1. The do not address claims 2. Garmin filed a motion to withdraw because apparently agree agreed any appeal participate 22 and 23 and that the mo- it not to pres- part tion for leave to amend on those claims the IPR written decision as of a settle- agreement ents the same issues as claim 21. ment with Cuozzo. 314(d) “broadly ap- § bar on as worded

Discussion 314(d) “certainly § peal” and held that I the PTO’s interlocutory review of bars” phases. in two St. Jude proceed IPRs at petition of a for IPR. 749 F.3d denial Div., Med., Inc. v. Volcano Cardiology supported This result was 1375-76. (Fed.Cir. 1373, 1375-76 Corp., 749 F.3d appeals to this § which “authorizes 2014). phase, the PTO deter In the first only from ‘the final written decision court IPR. In the to institute mines whether (quoting at 1375 [Board]Id. the-IPR the Board conducts phase, second 319) (alteration original). § 35 U.S.C. Id. a final decision. proceeding and issues interlocutory Similarly, the bar to review im argues that the PTO Cuozzo 141(c), § which supported by 35 U.S.C. IPR on claims 10 instituted properly appeal only, by party “authorizes ‘a prior relied on art’ the PTO because ... partes inter review who is dissatisfied identify petition in its not that Garmin did the final written decision of the ” two claims IPR as to those grounds 318(a).’ (quot- under section Id. [Board] was iden question art in (though prior 141(c)) (alterations orig- ing 35 U.S.C. 17). Under the respect tified with inal). But while we stated statute, IPR must “iden- any petition for any “may preclude well all review ... tif[y] particularity ... with route,” we did not decide the issue. Id. challenge to each grounds on which the 312(a)(3). 35 U.S.C. claim is based....” 314(d) may only prohib We conclude that the PTO grounds identified IPR IPR based on its review of the decision to institute institute may face, because Director petition “[t]he in the a final its even after decision. On review to be partes authorize an inter precluding is not directed to re provision the Director determines instituted unless only before a final decision. It is view presented peti information that the to exclude all review of the deci written ... shows that any response ... and sion whether to institute review. Section likelihood that there is a reasonable 314(d) provides that the decision is both 314(a). § prevail....” Id. petitioner would “final,” i.e., “nonappealable” and not sub 314(d). § 314(d) ject to further review. 35 U.S.C. appeal” entitled “No Section by A declaration that the decision to institute that determination provides “[t]he reasonably interpreted to institute an inter is “final” cannot be the Director whether under this section shall be until issuance partes postponing review as review after final nonappealable.” 35 U.S.C. patentability. of a final decision on More 314(d) 314(d). § argues 141(c) § over, The PTO § § al given 319 and to in- review of a determination precludes final ready appeals appeals limit to from 314(d) § argues that stitute IPR. Cuozzo 314(d) decisions, § unnec would have been review of the completely preclude does not essary of in preclude to non-final review IPR, instead decision to institute but 314(d) § Because stitution decisions. au- merely review of the PTO’s postpones unnecessary interlocutory appeals, limit the issuance of a final thority until after of all institu it must be read to bar review decision the Board. decisions, issues even after the Board IPR 314(d) a final decision. Nor does the statute § addressed previously We have authority limit at the expressly the Board’s precludes that it interlocu- and have held stage grounds alleged final to the decision whether to insti- tory review of decisions Jude, simply in IPR It authorizes petition. In we characterized tute IPR. St. ly provides “a final decision that there is no appeal the Board to issue written avail- any respect patentability to the of a able decision to institute. There was challenged by petitioner patent claim finding no bar here to claims 10 and 14 any new claim added under section unpatentable based on the Evans and/or 318(a). 316(d).” § 35 U.S.C. Wendt references. The failure to cite petition those references in the provides Co., in In re Our decision Hiniker ground no for setting aside the final deci- (Fed.Cir.1998), F.3d confirms sion. position here. the correctness of PTO’s There, provision comparable even absent a argues that Congress would 314(d),3 that a decision we held flawed not have intended to allow the PTO to institute reexamination under 35 U.S.C. in institute IPR direct contravention setting 303 was not a basis for aside statute, example, grounds on prior Hiniker, final decision. 150 F.3d at 1367. IPR public permits use where the statute Hiniker, at in Under the statute issue petitions only on the basis of art “prior only could be instituted if reexamination consisting patents printed publica the Commissioner determined there tions.” 35 U.S.C. 311. The answer is question patent- “a new

was substantial may that mandamus be to chal available i.e., art ability,” prior new not considered lenge grant the PTO’s peti decision 303(a) by the examiner. 35 U.S.C. tion to IPR institute after the Board’s final (1994). Hiniker, In the PTO instituted decision situations where the has prior reexamination on art consid- based clearly indisputably exceeded its au (Howard). original examination ered thority. Hiniker, 150 F.3d at 1365. But the PTO’s previous The PTO that our deci (which final decision relied on East had not preclude sions mandamus. In re Do been before the examiner in the initial Solutions, LLC, minion Dealer examination) finding the claims invalid. (Fed.Cir.2014), we held that jurisdiction at 1366. held that our Id. We relief mandamus was not available to chal only appeal was “over Hiniker’s from the lenge petition the denial of a for IPR. decision of the Board.” [final] Id. scheme, statutory there was no Given “ the final would decision have been While right’ to indisputable challenge ‘clear and subject if improperly to reversal it had directly a non-institution decision this only art prior presented relied on court,” required for mandamus. Id. examiner,4 any instituting error in reexam- Co., in In And re Procter & Gamble ination based on the Howard reference (Fed.Cir.2014), F.3d 1378-79 we held during was “washed clean the reexamina- pro that mandamus was not available to proceeding,” relied on art. which new vide immediate review of a decision to petition The fact that the Id. was defective institute IPR. There was no “clear and a proper petition is irrelevant because indisputable right to this court’s immediate could have been drafted. The same is 314(d) here, explicit- even clearer where review of a decision to institute an inter 314, Inc., Packaging, F.3d 3. Unlike the reexamination statute 4. See In re Portola 110 786, 789, superseded by recognized statute as only provides that determination "[a] NTP, Inc., (Fed. by In re F.3d 654 1277 ... that Commissioner no substantial new Cir.2011); Corp., In re Recreative Techs. 83 question patentability of has been raised will (Fed.Cir.1996). Congress F.3d 1394 subse- nonappealable.” final and be 35 U.S.C. quently provide amended the statute to for 303(c) (1994) added). (emphasis prior of art before the examin- consideration er. 35 U.S.C. 303. 1278 review, as would be needed for ment for It

partes mandamus. is not clear that relief.” Id. at 1379. Further- strictly mandamus IPR is grounds limited as more, of that not one the rare situa- “[wa]s in petition. serted The PTO urges irremediable interim harm tions which instituting that IPR of claims 10 and mandamus, which is justify unavail- c[ould] grounds based on the for claim 17 was patentee] to relieve simply [the able proper claim depends because from through partes the inter going burden of claim depends which from claim 10. (citation omitted). However, review.” Id. Amy grounds which would invalidate claim question we did not decide whether by necessary 17 would implication also in to institute review is reviewa- the decision Callaway validate claims 10 and 14. See after the Board ble mandamus issues Co., Co. v. Acushnet Golf final decision or whether such review is (Fed.Cir.2009) (“A indepen broader 314(d). by § Id. Nor do precluded we do dent claim cannot be nonobvious where a so now. dependent stemming from inde obviousness.”). pendent claim is invalid for §if does not

Even bar manda implicitly that Garmin decision, a final mus after least “three unpat- asserted that claims 10 and 14 were be conditions must satisfied before writ [a entable when it asserted that claim 17 may Cheney issue.” was mandamus] v. U.S. D.C., 367, 380, unpatentable. Dist. Court 542 U.S. Whether or not the PTO is for (2004). S.Ct. L.Ed.2d 459 correct in aspects, these it is at least be “First, party seeking ‘the issuance of the yond dispute there is no clear and indis adequate writ have no other [must] means putable right precludes institution of ” to attain the relief (quot he desires.’ Id. proceeding. the IPR We need not decide ing Kerr v. U.S. Dist. Court the N. whether mandamus review institution of Cal., Dist. 426 U.S. 96 S.Ct. IPR a final after decision is available (1976) (alteration 2119, 48 L.Ed.2d 725 in other circumstances. That original)). appears condition to be II by appeal

satisfied since review is unavail “Second, able. the petitioner satisfy must contends addition that showing ‘the right burden that his to the Board erred in finding the claims obvi issuance of the writ indisputa is clear and ous, arguing initially that the Board should ” (internal ble.’ Id. at 124 S.Ct. 2576 applied have the broadest reasonable citation, quotations, and alterations omit interpretation standard in claim construc ted). “Third, court, issuing in the tion. discretion, exercise of its must be satisfied appropriate the writ is the cir under A (citation omitted). cumstances.” Id. (“ALA”) The America Invents Act creat- IPR, ed but the Here, statute on its face does not Cuozzo has not filed man resolve the issue of whether the broadest petition, damus but even if we were to appeal interpretation treat its as a request ap- for mand standard is amus,5 IPRs; the situation propriate here is far from sat it is silent on that isfying clear-and-indisputable However, require issue. conveys statute rule- Wright, 5. See 16 Charles A. attempted appeal Arthur R. Miller writ in the sense that an Cooper, & Edward H. Federal Practice and nonappealable from an order that is can be (3d 2012) § Procedure ("Many 3932.1 ed. (citations petition treated as a for a writ.” seemingly propo- cases illustrate the converse omitted)). appeal sition that ... an can substitute

1279 authority making provides See, to the PTO. It approved have e.g., that standard. prescribe that Director shall regula- Young, 481, “[t]he Miel v. App.D.C. 29 484 alia, tions,” (D.C.Cir.1907) (“This “setting forth inter the stan- given should be showing dards for the of sufficient grounds the interpretation broadest it which will review,” ... “establishing to institute support.....”); Rambus, Inc., In re 753 governing 1253, (Fed.Cir.2014) inter partes (“Claims review ... and F.3d 1255 relationship the of such review to other are generally given their reason ‘broadest 316(a)(2), § proceedings----” 35 interpretation’ U.S.C. able consistent with the (a)(4). (cita Pursuant authority, to this the specification during reexamination.” promulgated omitted)); PTO has 37 C.F.R. In re Am. Acad. Sci. of 42.100(b), Ctr., § which provides 1359, (Fed.Cir. that claim Tech 367 “[a] F.3d 1364 2004) in unexpired patent shall be its given (“Giving their claims rea broadest broadest reasonable light construction in sonable construction ‘serves the in public of the specification patent of the in which terest the reducing possibility that 42.100(b). it appears.” claims, 37 C.F.R. finally allowed, Cuoz-' will be given broad ” zo argues authority the PTO lacked to justified.’ er than scope (quoting re 42.100(b) Yamamoto, promulgate 1569, (Fed.Cir. and that the 740 F.2d 1571 interpretation 1984))); Morris, broadest reasonable stan- In re 1054 (Fed.Cir.1997) (“[W]e inappropriate adjudicatory dard is in an reject in appellants’ IPR proceeding. The PTO 35 vitation to construe either of the cases provides U.S.C. 316 the au- necessary by appellants overrule, cited so as to sub law____It thority silentio, the to PTO promulgate decades old case would 42.100(b) and that be the broadest reason- inconsistent with the role assigned to able the in interpretation appropriately issuing PTO it applied patent require in interpret the IPR context. claims in the same manner as who, judges post-issuance, operate under assumption the patent the is valid. The process of prosecution is an interac addressing scope

Before the of one.”); Carr, tive In re F. rulemaking authority, PTO’s we consider (D.C.Cir.1924) (“For this reason we have of history in- broadest reasonable uniformly given ruled that claims will be terpretation standard and the bearing interpretation they the broadest of which history interpretation on the of the reasonably are susceptible. This rule is a IPR statute. No section one, pro only reasonable and tends not explicitly provides statute that the broad- invention, tect real but to prevent est interpretation reasonable standard litigation the patent needless after has is shall in any proceedings. be used PTO sued.”); Kebrich, In re 40 C.C.P.A. Nonetheless, the in broadest reasonable (“[I]t (1953) F.2d is ... well terpretation standard been applied has settled that ... tribunals [of PTO] predecessor PTO and its for more than reviewing courts the initial con years types proceed various patentability sideration of give will ings. A 1906 explained, PTO decision which, within interpretation broadest construing “[n]o better method of claims is reason, may applied.”). be perceived give than to them each ease interpretation the broadest which will they approved This court has support straining without language interpretation broadest stan they which variety couched.” Podlesak v. dard in a proceedings, including McInnerney, examinations, interferences, 1906 Dec. Comm’r Pat. initial more century, For than a such post-grant proceedings courts as reissues

1280 omitted), Indeed, tation marks and citations super that stan reexaminations. recognized as in every pro part in seded in statute applied has been PTO dard (Fed.Cir.2012); 678 1308 Astoria patents.6 In F.3d unexpired ceeding involving Solimino, Fed. & Loan Ass’n v. 501 so, long history Sav. cited the of doing we have 2166, 111 115 L.Ed.2d U.S. S.Ct. their giving claims broadest rea the PTO’s (1991); & v. See, 96 Procter Gamble Co. e.g., Yama construction. sonable Kraft (Fed. Global, 842, (reexamina 549 F.3d 848-49 Foods moto, 740 F.2d at 1571-72 Cir.2008) that (improper presume to con tions); Reuter, 1015, F.2d 1019 In re 670 gress backdrop existing alter 1981) would (CCPA (reissues); Hurst, Reese v. silentio). law 1981) sub (CCPA (interfer F.2d 1236 661 Prater, ences); In re 56 C.C.P.A. 415 Here, in AIA Congress enacting was (examinations). (1969) F.2d 1404-05 well aware broadest reasonable interpre reasonable Applying broadest prevailing interpretation standard was the possibility “reduce[s] tation standard (daily Cong. rule. S1375 ed. See Ree. that, patent granted, after the is the claims (statement 2011) (al- Kyi) Mar. of Sen. interpreted giving cov may be broader to lowing written statements be considered Reuter, justified.” erage than is 670 F.2d in ... partes inter review “should allow Prater, 415 1404- (quoting at 1015 F.2d at identify the Office to inconsistent state- 05S). scope ments made about claim exam- —for ple, where a owner cases success- There is AIA no indication that the fully in scope advocated claim district designed change to the claim was construc court that is broader than the ‘broadest applied standard that the PTO has he now urges reasonable construction’ that 100 years. Congress pre than is more review”). partes in an It can inter there- legislate against background to sumed Congress impliedly fore inferred that be existing Congress enacting law where adopted existing adopting rule of legislation prevailing is aware of the rule. reasonable construction. broadest As we held Tire GPX International judicial congres- or States, v. “the Corp. principle United approval sional broadest reasonable legislative ratification is well established. proceed- for other interpretation standard widely judicial In the case of a known ings irrelevant the earlier is here because agency or practice, Congress decision is judicial availability decisions relied on the presumed to be aware of an administrative amendment, AIA limits amend- judicial of a interpretation statute proceedings.7 ments in IPR adopt interpretation when it re a statute change.” proceedings materially enacts without But IPR are not (Fed.Cir.2011) (internal 316(d)(1) respect. in that quo- F.3d different Section See, Yamamoto, expired e.g., The claims of 7. an are the one 740 F.2d 1571-72 ("An ability applicant’s amend his exception where the broadest in- prior distinguishes proceed- cited art avoid terpretation patentee because not used ings proceedings the PTO before from fed- Rambus, is unable amend the claims. (em- patents.’’ eral courts district on issued here, ("If, F.3d at 1256 as is the case Reuter, added)); ("It phasis F.2d at 1019 expired claims of reexamination involves is well settled that claims before the patentee patent, a unable to make given to be their broadest reasonable inter- applies amendments and the PTO the claim pretation specification consistent principles construction outlined court this patent applica- during the of a examination (Fed. Phillips Corp., v. AWH applicant may tion since the then amend his (citations omitted)). Cir.2005).” ” (internal quotation marks claims.... omit- Prater, (”[T]his ted)); 415 F.2d at 1404-05

1281 patentee may ty a file mo- a provides that one is not material Nor difference. is the “[cjancel any fact that IPR bemay adjudica- tion to order to said to amend be “[f|or tory rather than an examination. Inter- challenged patent claim” each ference proceedings also in claim, some sense challenged propose reasonable adjudicatory, Miller, see Brand v. 487 F.3d claims,” number substitute 35 of U.S.C. (Fed.Cir.2007) 867-68 (characterizing 316(d)(1), § ... though amendment “[a]n proceedings interference as adjudicatory may enlarge of the claims of scope not the holding that the Board’s decision be matter,” patent the new id. or introduce record), on yet reviewed the the broadest 316(d)(3). § regulations provide reasonable interpretation applies, standard may patent that owner file one motion “[a] Genentech, Corp., see Inc. v. 112 Chiron only patent, to amend a but after confer- (Fed.Cir.1997) (“In F.3d 500 the ab- ring the with Board.” 37 C.F.R. of it ambiguity, sence is fundamental that 42.221(a). § presumption “The that is language the a count given of should be only one claim would be substitute needed the broadest reasonable interpretation it claim, it replace challenged to each support....” Baxter, will (quoting In re may of be rebutted a demonstration (CCPA 1981))). 656 F.2d 686 In any 42.221(a)(3). need.” The statute Id. event, Congress in AIA enacting the was provides also motions “[additional of aware these differences terms of permitted upon amend be may joint the adjudication amendments and and did not request petitioner and patent the provide for a different than standard the 316(d)(2). mo- owner....” U.S.C. “A interpretation broadest reasonable stan- may tion the to amend be denied where” dard. We that Congress implicit- conclude either to a respond amendment “does ly the adopted broadest reasonable inter- ground unpatentability of involved in the pretation enacting standard the AIA. enlarge scope trial” or [IPR] “seeks to the of patent the claims the or introduce subject new matter.” C.F.R. Even if we were to conclude that 42.221(a)(2). Congress adopt did not the broadest rea

Although opportunity amend interpretation enacting sonable standard in IPR it setting, cabined in the none- thus AIA, § authority provides theless available. The fact that the patent rulemaking. Although PTO to conduct we owner may single 2(b) be limited to amend- previously have held 35 U.S.C. ment, claims, may not broaden grant rulemaking does not substantive au ground PTO,8 must unpatentabili- thority Cooper address Techs. Co. v. (b) Specific consistently court has taken tack Powers. —the Office— yet unpatented given are to be (2) interpretation may regulations, broadest consistent establish not inconsis- law, specification during with the the examination tent which application (A) applicant of a govern proceedings since the shall the conduct of also, claims....”); Office; may then amend his see in the Skvorecz, (Fed. e.g., (B) In re 580 F.3d shall be made accordance with sec- Cir.2009) ("As 5; explained in the Manual 553 of title ..., (MPEP) Examining Ap- (C) Patent expedite process- Procedure shall facilitate plicant always opportunity applications, particularly has the to amend ing of (internal filed, stored, during prosecution....” processed, the claims those which can be omitted)). searched, quotation electronically, marks and retrieved sub- ject provisions relating of section 122 provides, part: applications^] 8. Section 2 in relevant to the confidential status of (Fed.Cir. statute, Congress IPR Dudas, text of the 1335-36 subject was claim construc- rulemaking silent on 2008), new granted the AIA standards, and, 316(a)(2) arguen- tion if we assume PTO. Section authority to the rea- adopt do that it did not the broadest regu that the PTO shall establish provides standard, step one interpretation sonable the for the “setting forth standards lations to proceed is satisfied. Chevron We grounds to institute a showing of sufficient The step analysis. of the Chevron 316(a)(2). two § Sec review....” 35 U.S.C. in- regulation presents here a reasonable 316(a)(4) provides the PTO further terpretation of the The PTO has statute. “establishing gov authority and with for inter- long applied the broadest reasonable chap under erning partes inter review this pretation proceedings, standard other relationship of such to ter and the review in- suggesting that a broadest reasonable this Id. proceedings under title.” other terpretation appropriate standard is 316(a)(4). provisions expressly These above, policy IPRs. the ratio- As discussed authority the with to estab provide PTO interpre- nales the broadest setting the “standards” for regulations lish pro- tation other examination standard instituting regulating pro and IPR review IPR context. ceedings apply also the ceedings. reasonable inter The broadest to provides The statute also for the PTO both pretation standard affects the PTO’s IPR to consolidate an exercise discretion to institute IPR determination of whether proceeding PTO. another before the in proceedings proceedings and the after 315(d). 35 possibility See U.S.C. authority the PTO’s stitution is within consolidating multiple types proceedings under statute. suggests single construction stan- Congress Because authorized dard proceedings appropriate. across is prescribe regulations, validity 42.221(a) PTO permissi- 37 C.F.R. reflects a analyzed regulation according of the is statutory language ble of the construction familiar 316(a). Chevron framework. See §in if Even reason- broadest Corp., 533 United States v. Mead U.S. in- interpretation able standard were not 226-27, 121 150 S.Ct. L.Ed.2d 292 corporated the IPR provisions into (2001); Bd., Sys. statute, Wilder v. Merit Prot. 675 properly adopted the standard was (Fed.Cir.2012). F.3d 1322 Under regulation.

'Chevron, the is question first “whether B Congress directly spoken pre has Chevron, question cise at issue.” v. U.S.A. second whether issue is Council, Inc., Natural Res. 467 U.S. properly here construed Board Def. 837, 842, 104 81 694 S.Ct. L.Ed.2d in claims under the broadest reasonable (1984); Cooper, accord 536 at 1337 terpretation F.3d standard. review the We States, (quoting Hawkins v. United according Board’s claim construction (Fed.Cir.2006)). F.3d If the Court’s in Teva Supreme decision U.S.A., Sandoz, ambiguous, question statute is the second Pharmaceuticals Inc. v. — — Inc., U.S. -, interpretation agency’s “whether the S.Ct. .is L.Ed.2d - (2015). permissible underly on a based construction of We review statutory language ing concerning at issue.” factual ex Cooper, determinations Hawkins, at 1338 (quoting F.3d trinsic evidence for substantial evidence 1000). the claim the ultimate construction of 2(b)(2)(A)-(C). 35 U.S.C. en meaning.

de novo. See id. Because there no some As the Board ex- evidence, plained, illogical here it would regard issue as to extrinsic we “be one being unit as the claim de novo. ‘attached’ to itself.” review construction J.A. 9. The specification further supports following includes the limita- Claim Board’s speedometer construction that the “a speedometer integrally tion: attached speed independent limit are —it '074 display.” to said colored col. 7 repeatedly speed refers to a limit indicator 1. 10. Cuozzo that the board im- independent any speedometer properly phrase “integrally construed the states that “the present invention essen- attached.” The Board construed “inte- tially comprises speed limit indicator meaning grally attached” as “discrete comprising a speed display limit and an physically joined together a unit parts as speedometer.” attached '074 col. 2 part each its own losing separate without 11.52-54. The Board not err did in its identity.” J.A. 9. contends that Cuozzo the claim construction. “integrally correct construction of at- “joined tached” should be or broader — C complete combined to work as a unit.” question The third is whether Board, Appellant’s Br. 33. Before the claims and 17 were obvious. We stated that its construction would Cuozzo review the Board’s factual findings for sub “a display functionally that both cover stantial evidence legal and review its con structurally the integrates speedometer Int’l, Inc., clusions de re novo. In Baxter the such display, colored that there (Fed.Cir.2012). 678 F.3d The single is a J.A. 10. only display.” Cuozzo ultimate determination obviousness un that the claim Board’s construction question der 103 is a of law based on single-LCD excludes a improperly embodi- underlying findings. factual Id. (citing speed- ment the invention wherein Co., Graham v. John Deere 383 U.S. limit speed ometer indicator are 17-18, (1966)). 86 S.Ct. 15 L.Ed.2d 545 same on the LCD. What a reference teaches and the differ phrase attached” “integrally was ences between the claimed invention and specification not included in either the or prior questions art are of fact which claims as filed. originally phrase we review for substantial evidence. Id. by introduced an amendment was to claim (citations omitted). that, Cuozzo states rejection overcome a 10 to the claim purposes appeal, “[f]or the this 102(e) anticipated was under Awada.9 10, 14, together.” and 17 fall Ap rise and see no interpre- Therefore, We error the Board’s Br. 17 n. pellant analyze 1. we giv- only tation. The word “attached” must be claim 10. patent corresponds speed 10 of the display....

9. Claim ’074 limit The vehicle’s driver during pat- the claim numbered claim 11 separate is forced to look in two locations prosecution. ent mentally compare speed and then limit amendment, Prior included the speed with his vehicle’s how determine speedometer "a limitation: attached to said speeding close he if already is to he is not speed display.” pro- limit 100. J.A. Cuozzo's sufficiently doing light so to activate the posed amendment to that limitation recited contrast, present tone.... In in- and/or speedometer integrally "a attached to said provides integrated display vention an al- display.” proposing Id. colored lowing immediately the driver to ascertain amendment, argued Cuozzo that the amend- speed pre- both his and its relation to the overcame ment Awada because vailing speed limit.” (6,515,596) cited "[t]he Awada lacks a J.A. 104-105. speedometer integrally attached Lintner, construction, In re 59 C.C.P.A. (quoting own claim its Even under (1972)) (internal alter- mechani- the disclosed agrees omitted). if the mechanical Thus ations filter is a red colored cal embodiment obvious, claim 10 is obvious. embodiment is analog In the scope. the claim within the mechanical determined that The Board specification, in the disclosed embodiment Aumayer, over embodiment was obvious a white on superimposed filter is a red Evans, no error in We see and Wendt. above the “speeds so speedometer that determination. in red ... displayed limit are legal speed displayed legal speeds which display while a Aumayer discloses A 5 11.35-37. '074 col. and indicates the speed white....” a vehicle’s shows location, by highlighting the vehicle’s limit speed unit tracks current GPS speed is deter- mark on a scale or appropriate limit at that location speed a automatically mark of different producing ro- scale The red filter mined. 11.12, Aumayer col. 5 color. col. length speeds so that over response tates teaches obtain- Aumayer 11.19-31. further in red. displayed limit are legal speed from of a vehicle ing the current location rule that “long-established GPS, Abstract, It col. id. on-board on enough broad to read 41-45, speed ‘claims which are limit data “updating un-patentable by matter are means of a radio subject in the vehicle obvious stored a carri- by read on nonobvious ... means of data though they also connection even ” Muniauction, er,” provides 2a Figure Inc. v. col. 11.54-57. subject matter.’ id. n. 4 an illustration: Corp., 532 F.3d Thomson it, portion a through dial is viewed speed a maximum ometer displays Element 105 limit, speeds this same excess highlights representing and element 107 of the dial speed point- by speed limit on the scale. limit are demarked predetermined a by displays element designated er col. 11.3-8. warning indicia.” Evans speed. current vehicle’s but can be generally fixed plate repositioned removed and recut and/or transparent plate a Evans discloses range of to extend over a different order indicia, spe- a warning example, “bears Figure 3 is illustra- numbers on the dial. marks, plurality a cial color and/or speed- that when the tive: spaces, ridges, etc. so Evans, speed Aumayer,

Wendt discloses a limit indicator Wendt arrive at cup which is the analog attachable suction embodiment. Cuozzo does not cover a speedometer. any The indicator has contend that secondary considerations pointer argue against which rotatable to indicate the a finding of obviousness. speed current limit. Claim 10 would have been obvious over Aumayer, Evans, Evans, Aumayer, and Wendt because it “continuously encompasses analog Wendt do disclose embodiment of which updating] speed the delineation of the invention specification. discussed readings speed in violation of the We limit need not address claim whether 10 is location,” Awada, at a present required Tegethoff, vehicle’s also obvious over Ev- ans, Wendt, '074 7 11. col. 6-9. as the Board also conclud- particular, Aumayer ed. Cuozzo contends that updating speed discloses limits associated D region geographic a and not with a

position by locating determined the GPS Finally, we consider whether the device. Board “it The found that is indis- properly Board denied motion Cuozzo’s putable Aumayer displays speed the amend, finding leave to that Cuozzo’s sub limit for the current location of a vehicle as stitute enlarge scope claims would the receiver, a determined GPS and not patent. the Cuozzo moved to substitute merely speed the limit for a certain class claim following 10 with the substitute claim given region of road in a without any 21:

connection to the vehicle’s current loca- A speed limit indicator comprising: finding tion.” J.A. sup- Board’s is a global positioning system receiver de- ported by substantial evidence. location, termining present a vehicle’s present speed a a speed vehicle’s and argues

Cuozzo also that there is no moti- location; present limit at the vehicle’s Evans, vation to Aumayer, combine and Aumayer display Wendt because is an automatic a controller connected to said global receiver, device while Evans and positioning system Wendt manual However, “[a]pplying adjusts devices. modern display wherein said controller display electronics to older mechanical devices has a in response sig- colored to commonplace years.” been in recent nals indicative of the limit at speed Enters., Fisher-Price, Leapfrog present Inc. v. the vehicle’s location from Inc., (Fed.Cir.2007). global 485 F.3d positioning system said receiver It continuously would been update have obvious combine the delineation depen- limitations from two readings copied determined instead speed

of which system re- positioning patent. the dent claims the global speed in violation the ceiver are proper of the Based on the construction location; present vehicle’s limit attached,” agree we phrase “integrally and proposed with the PTO Cuozzo’s integrally attached speedometer a broadening. itself amendment is Cuozzo display, said colored de- argues that the motion amend was a comprises speedometer wherein interpre- solely nied because PTO’s crystal liquid display, attached,” “integrally tation liquid display wherein the colored if only necessary that a rémand is we were crystal display. Board’s to reverse the claim construction 357-58. J.A. done). (which admits we have “integrally that the Board’s construction of and PTO regulation

The statute single “excludes the LCD em- attached” would amendments which broaden bar the invention in 316(d)(3); bodiment of which of the claims. 35 U.S.C. scope 42.221(a)(2)(h). In includes an that is the speedometer LCD past, 37 C.F.R. requirement Appellant this in the Pro- display.” have construed colored Br. 33. we and reexaminations. context reissues 21 recites “a in- posed speedometer claim contexts, applied In both we have the test display, to said tegrally attached colored in scope claim than the that a “is broader speedometer comprises liq- wherein original claims if it contains within its crystal col- display, uid and wherein the any apparatus pro scope conceivable liquid display.” ored display crystal is the have infringed cess which would not added). The word (emphasis J.A. 358 Tillotson, Ltd. original patent.” v. Walbro “the,” language in the emphasized quoted (Fed.Cir. n. 2 Corp., 831 F.2d above, requires single-LCD embodiment 1987) (in context); In re reissue see speedometer includes both the (Fed.Cir. Freeman, 1459, 1464 Because display colored one LCD. 1994) Tillotson, 831 at 1037 (quoting F.2d proposed 21 would encompass (in 2) context). n. the reexamination encompassed by claim embodiment not applies same test in the context of IPRs. it amend broadening, motion to Therefore, inquire we whether Cuozzo’s properly was denied. claims proposed substitute would encom AFFIRMED any apparatus process pass that would original not have been covered the NEWMAN, dissenting. Judge, Circuit claims.10 Board held that The claim dissent, I respectfully several it broadening was because would encom panel majority’s rulings contrary to single-LCD pass embodiment wherein legislative Leahy-Smith the purpose the speedometer and the dis both colored Act, 112-29, America Invents Pub.L. No. LCDs, not play are which was within the (2011) (effective September 125 Stat. 284 original argues that claims. Cuozzo 2012). 16, proposed broadening claims were claim, respect original though it 10. that its substitute than the even may narrowing single- respects.” other re it is limited to the be in because narrowed 733, 601, longer Rogoff, LCD and no en- 46 C.C.P.A. embodiment would Co., (1958); Senju compass the also Ltd. v. mechanical embodiment. This see Pharm. Inc., 1344, (Fed.Cir. argument broadening. Apotex F.3d the test for misstates 2014). any "[A] claim is broadened if it is broader in The America Act present Invents established a in Review; Inter Partes amend- system new Inter Partes Review for the ment of requires permission, purpose “providing quick and cost effec- inception since the Review, of Inter Partes litigation.” tive alternatives to H.R.Rep. motions to amend have granted been in 112-98, pt. (2011), No. at 48 cases, only two although many have been U.S.C.C.A.N. 78. This purpose was requested.1 achieved providing adjudicatory new The purpose of Inter Partes Review is proceeding in agency, the administrative to “convert” partes inter reexamination and Trademark in Patent Office “from an examinational proceeding to an Commerce, Department of whereby a new- adjudicative proceeding.” H.R.Rep. No. ly formed Patent Appeal Trial and Board 112-98, pt.l, at 2011 U.S.C.C.A.N. (PTAB) surrogate serves as a for district (Mar. 77. See also 157 Cong. Rec. S1111 litigation court of patent validity. The 2011) (statement (the Leahy) Sen. goal improved service to technology- purpose is “decrease[ ] the likelihood of to. innovation, based and thus to the nation. expensive litigation because it creates a panel majority statutory thwarts the costly, less in-house administrative alterna plan ways. in several claims”). tive to patent validity review By First, panel majority holds that the refusing to apply to Inter Partes Review PTAB, conducting pro- its adversarial procedural and substantive law of the ceedings, need not apply and should not courts, district panel majority defeats

the same legal evidentiary standards the legislative purpose, for the PTO tribu apply as would in the district court. In- nal cannot serve a surrogate for district stead, panel majority authorizes and litigation court if the PTAB apply does not requires treating the claims of an issued the same law to the same evidence. patent in way the same as pending claims Second, application stage, departure where and as a further from subject claims are to the “broadest legislative reason- plan, panel majority able interpretation” protocol. examination holds that the “final and nonappealable” panel majority precludes thus achiev- statutory provision relating to whether to ing review of validity Inter institute Inter Partes Review means that “ Partes comparable Review to that of the 314(d) ... must be read to bar review courts, district validity where is deter- decisions, of all institution even after the mined based on the correct claim construc- Board issues a final Maj. op. decision.” tion, not an artificially “broadest” con- 1289. Does this mean that such decisions struction. reviewed, can judicially never be if even law, contrary to if even material

This court has approved the use of final appealed judgment? ruling ap- “broadest reasonable This interpretation” as an expedient pears impede judicial full examination and reexamina- review of the tion, approval decision, but our negating was based on PTAB’s final further unfettered opportunity purpose to in amend those of the America Act Invents proceedings. opportunity That adjudication is not achieve correct va- Williams, Hoekel, 1. See Andrew Update PTAB Opposed E. PTAB Grants First Motion —The (At Board Grants Its Second Motion to Amend Appeal to Amend Claims—Patent Trial and Part), (Jan. 8, 2015), Board, (Jan. 14, Least in Patent Docs The National Law Review http ://www.patentdocs. 2015), org/2 015/01/ptab- http://www.natlawreview.com/article/ update-the-board-grantsits-second-motion-to- ptab-grants-first-opposedmotion-to-amend- amend-at-least-in-part.html; claims-patent-trial-and-appeal-board. see also Jennifer courts, appropriate in where all evidence can Partes Review the lidity through Inter adduced). agency. administrative be of the America aspects other Several Review is limited to Inter Partes incorrectly confusingly Act are Invents in validity is a central issue validity, for points example, For as Cuozzo treated. patent litigation, dispositive and often is out, PTAB decision relies on ar- here the litigation. To as a reliable the entire serve evidence that had not been guments and validity for district court deter- substitute institute, although in petition raised mination, designed to legislation was arguments that all and requires the statute as would achieve the same correct decision petition. in the presented evidence must be in court on the same be obtained a district fact majority holds that panel “[t]he However, this evidence and the same law. defective is irrelevant petition that the was adjudication PTAB need court holds that proper petition could have been because not conform the law and consider the to. Maj. op. at 1290. Such broad drafted.” Instead, same evidence as the courts. conflicting departure and from the statuto- majority PTAB to panel authorizes the cannot have been intended. ry provisions employ expedients and shortcuts a far- Inter Partes Review is intended as developed give-and-take for the were reaching powerful surrogate and for dis- reexamination, examination and instead of validity determinations. The trict court determining validity as a matter of fact proceeding that an adversarial plan is law, required in the and as courts. of patent the PTO'will resolve most issues ap- PTAB Although the is authorized validity, disruption without and ex- evidentiary my trial ply procedures, and litigation. pense delay of district court PTAB need not colleagues hold today I the court write dissent because of law and evidence apply the same rules Inter Partes Review in directions moves It critical to as the district courts. contrary language and intent of the that it the success of Inter Partes Review Act, thereby impeding America Invents its purpose its as a district court surro- serve surrogate to serve as a for district purpose yet it gate, disputed is not the “broad- litigation. court interpretation” of claims est reasonable I technology can differ from the ulti- mately on the correct decision standards surrogate Inter Partes Review Phillips Corp., v. AWH 415 F.3d 1303 litigation for district court (Fed.Cir.2005) (en banc). This built-in dis- goal of Inter Partes Review is crepancy legislative purpose of defeats the incentive, by rehabilitate the innovation re- substituting adjudication administrative inforcing patents eliminating valid in- adjudication, a PTAB for district court for patents through expeditious valid decision based on this artificial “broadest” litigation, alternative to on cost-effective litigation standard cannot substitute community the innovation whose results directed to the correct result. end, rely. can To this the new Inter proceedings provide Partes Review for dis- A covery, expert testimony, depositions, sub- My colleagues argue that Inter Partes briefs, poenas, argument and oral ad- -a simply Review is reexamination versaries. See Abbott Labs. v. Cordis thus should be conducted on (Fed.Cir.2013) patent, and Corp., 710 F.3d (the interpreta- the same broadest America Invents Act created an ad- argument This proceeding as in the district tion as for reexamination. versarial

1289 negated by heavy legislative empha- cannot serve a surrogate for district sis on differences from reexamination as litigation court if the PTAB does not apply procedures. achieved these new the same law to the same evidence. In- stead, Inter Partes merely Review will Report The House states that the Amer- become another mechanism for delay, ica Invents Act “converts” Inter Partes harassment, expenditure, despite the Reexamination “from examinational Congressional warning: proceeding adjudicative to an proceeding.” 112-98, 1, While H.R.Rep. (2011), No. this amendment pt. is intended to 67, 77; remove U.S.C.C.A.N. see also id. at current disincentives to current (describing post-grant review and Inter processes, administrative the changes “adjudicative Partes Review as systems”). made it not are to be used as tools Report further explains: for harassment or a means to prevent entry Unlike reexamination market proceedings, through repeated litigation only which a provide limited on basis administrative attacks on the validi- which to patent consider whether a ty a patent. Doing of so would frustrate issued, should have post-grant re- purpose of the section as providing proceeding permits view a challenge on quick and cost effective alternatives to any ground related to invalidity under litigation. section 282. The intent of post- 112-98, H.R.Rep. 1, pt. (2011), No. at 48 grant process early review is to enable 67, 2011 U.S.C.C.A.N. challenges to patents.... The Commit- The broadest interpretation reasonable new, tee believes that early-stage this law, standard is not a rule of but a prag process challenging patent validity matic protocol applied in patentability ex ... will make patent system more amination and reexamination. See In re improve efficient and the quality pat- of Yamamoto, (Fed.Cir. 740 F.2d patent system. ents and the 1984) (giving claims their broadest reason Id. at 46. It is undisputed Congress able interpretation “serves the in public intended Inter Partes Review would by reducing terest possibility reexamination, differ from examination or claims, allowed, finally will given be broad and that these proceedings new would be also, scope justified”); er than e.g., see adjudicative, validity like the proceedings (Fed.Cir. Hyatt, In re 211 F.3d in the district courts. In the PTAB’s 2000); Zletz, (Fed. In re

words, partes inter “[a]n review is neither Cir.1989). The broadest reasonable inter examination nor a reexam- pretation is an expedient, examination ination,” trial, but is “a adjudicatory in a canon of construction. It serves not to nature litigation.” [which] constitutes claim, state the correct meaning of the but Google Jongerius Inc. v. Panoramic provide a framework for clarification Techs., LLC, IPR2013-00191, Paper No. and amendment. (PTAB 2014). 4at Feb. Contrary to panel majority’s theory, implement To the intent of the America the differences between reexamination and Act, Invents judges the administrative post-grant proceedings very the new apply the PTAB must procedural the same relevant to Inter Partes Review. substantive law as the district courts. By adjudication validity standard for adopting protocol the examination is set Phillips broadest forth in v. interpretation, Corp., AWH where panel majority PTO and the negate given claims are their correct construction legislative purpose, for PTAB tribunals by person ordinary as understood skill C Adoption of a the invention.

in the field of the PTAB renders interpretation broadest that panel majority further The unreliable, leaving par- the rulings legally “approved” has the the Federal Circuit proceedings, whatever court ties district stan- interpretation” “broadest reasonable PTAB. That was not the decision variety proceedings.” dard in “a of [PTO] legislative plan. the have, ex- Maj. op. at 1279-80. Indeed we that expe- in In re Yamamoto the

plaining interpretation during exami- dient of broad B on the nation and reexamination is based claims, Yama- ready ability to amend that it irrel- majority holds is panel from stressing moto court this difference America Invents Act does evant that the judicial proceedings: reasonable inter- not mention a “broadest applicant’s ability An to amend his standard, stating that endorse- pretation” prior art distin- claims to avoid cited in approach “implicit” is ment of this guishes proceedings before Maj. op. at To legislative silence. 1281. proceedings from in federal district contrary, language of the America patents. ap- courts on issued Wlien an Congress Act demonstrates that Invents PTO, plication pending is the PTAB tribunals did not intend applicant ability has the to correct er- differently claims from the would construe language' adjust rors in claim district courts. scope protection of claim as needed. This interference, reexamination, While in an in- opportunity is available regulations and reissue statutes and refer action in district court. fringement claim, “patentability” to the of a 35 U.S.C. 740 F.2d at 1572. 135; 1.97, 305; §§ § 37 C.F.R. the term In routine examination and reexamina- throughout the Inter “validity” is used tion, fluid, the amendment of a claim is Partes statute. 35 U.S.C. Review process between an exam- back-and-forth carefully in the The distinction is made applicant, may present iner and the who statute, “validity” province for is the proposed amendments new claims. “patentability” applies adjudication, while according Reexamination “conducted Co., to examination. See re Donaldson established for initial ex- procedures (Fed.Cir.1994) (re- Inc., 16 F.3d provisions amination under the of Sections ferring patentability to “a determination 132 and 133.” 35 U.S.C. 305. The focus validity infringement the PTO or ... a proceedings of reexamination “returns es- court”). determination in a This distinc- sentially in an initial present exami- significant. tion is Etter, nation.” In re (Fed.Cir.1985). It significant, when The America Invents Act refers to the eligible reexamination are not claim,” “proper meaning patent of a see 35 amendment, patent expired, has 301(d) as when (referring proper U.S.C. to “the the PTO instructs examiners not to use the meaning proceeding of a claim in a interpretation. broadest pursuant that is ordered or instituted MPEP 2258 G states: 324”). 304, 314, or “proper section proceeding involving In a meaning of a claim” is the correct reexamination expired patent, claims of an claim con- meaning. province Correctness is the courts, purpose pursuant principle and correctness is the struction set Phillips forth the court v. AWH of Inter Partes Review. (Fed.Cir. 1303, Corp., 415 F.3d though agency’s interpretation of the (words 2005) generally of a claim “are statute under which it operates is entitled given ordinary customary their deference, to some ‘this deference is con- meaning” by as a person understood by obligation strained our to honor the ordinary skill in the art in question at statute, clear meaning of a by as revealed invention) the time of the should be language, purpose, its history.’” Se. applied expired since the claims are not Davis, Cmty. 397, Coll. v. 442 U.S. 99 S.Ct. subject to amendment. 2361, (1979) 980, 60 L.Ed.2d (quoting panel majority The stating is incorrect in Daniel, Teamsters v. 439 U.S. 566 n. proceedings Inter Partes Review are S.Ct, 790, (1979)); 58 L.Ed.2d 808 materially “not pre-AIA different” from see also Muwwakkil v. Pers. Office of proceedings respect opportuni- to the Mgmt., (Fed.Cir.1994) ty Maj. op. amend. 1280. (“When an agency’s interpretation of a It reported ability is that the to amend statute it is entrusted to administer is' claims Inter Partes Review proceedings, contrary to the intent of Congress, as di- PTO, as administered is almost vined from the statute and its legislative entirely illusory. requires Amendment deference.”). history, we it owe no permission, 42.20(b), 37 C.F.R. and to In promulgating 42.300(b), 37 C.F.R. date motions to amend have granted been departed from purpose cases, only two supra see note 1. Patent America Invents Act to create a reliable owners are limited to “one motion to substitute for district court litigation. The amend,” and are presumptively limited to invocation of the “broadest” construction substituting one claim for issued one rather than the correct construction is in- 42.221(a)(3). amended claim. 37 C.F.R. consistent language, with the purpose and Additional motions to amend' are allowed history of the America Regu- Invents Act. only “to materially advance the settlement lations implement must they statute proceeding” of a permitted by regu- “as serve, seek to not defeat it. See Ernst & prescribed lations by the Director.” 35 Hochfelder, 185, 213-14, Ernst v. 425 U.S. 316(d)(2). U.S.C. (1976) (“The 96 S.Ct. 47 L.Ed.2d 668 beyond It is debate that Inter Partes rulemaking power granted to an adminis- Review does not allow the kind of iterative trative agency charged with the adminis- process initially justified amendment tration of a federal statute is not power adoption of a reasonable inter- “broadest Rather, to make power law. it is the pretation” protocol in examination and re- adopt regulations carry into effect the examination. Congress will of expressed by as the stat- D ute.”). Pending potential legislative ac- tion, obligation it is our interpret panel majority states that the PTO acting within its statute in rulemaking authority. legislative accordance with its The Supreme Court has purpose.2 stated that “al- passed On December House ordinary claim as understood one of skill 316(a) amending H.R. section prosecution history pertain- to state in the art and the 113-279, that in Inter ing patent....” Partes Review "each claim a H.R.Rep. No. patent (2013). shall be construed such corresponding claim would at 13-14 Senate be in a patent civil action to invalidate a reported bill was to have stalled for reasons 282(b), including constructing under section proposed unrelated to this section. This clar- each claim of the legislative accordance with ification is further evidence of in- ordinary customary meaning of such tent. sum, whereby interlocutory proceedings harassing procedure

In broadest reasonable inter- given their filings by seeking those to immobilize the of their correct construc- pretation instead The bar patentee. or exhaust the Inter purpose Partes tion defeats interlocutory appeals is routine. How- for district court surrogate Review as a ever, scrutiny required, sensitive litigation. enlargement blanket for all circumstances. Michigan Academy Bowen v. Fami- of II ly Physicians, 476 U.S. S.Ct. nonappealable decision to institute The (1986) 2133, 90 L.Ed.2d 623 the Court Inter Partes Review explained beginning that ‘our “[f]rom Invents Act states that the The America judicial cases that re- [have established] to institute Inter PTO’s decision whether agency ag- a final action view of nonap- “final and Partes Review is grieved person will not be cut off unless 314(d). panel pealable.” 35 U.S.C. The that persuasive there is reason to believe majority rulings holds that this means that purpose Congress’.” such was the of Id. the institution of Inter connection with (alteration in origi- at 106 S.Ct. 2133 Review, granted Partes whether review is nal) Gardner, (quoting Abbott Labs. v. denied, court, any appealed or cannot be U.S. 87 S.Ct. 18 L.Ed.2d by interlocutory appeal appeal either or on (1967)). judgment. of final That is not what the states, requires. statute points out that here the PTAB majority panel The “conclude[s] arguments decision relies on that had not 314(d) prohibits review of the decision to review, petition been raised con institute IPR even after a final decision. trary requirements to the of the statute. face, provision On its is not directed to 312(a)(3) (the petition 35 U.S.C. must only review a final precluding before deci- identify grounds and evidence as to It is written to exclude all sion. review claim). majori challenged panel each The whether to institute decision review.” ty petition holds that fact that the “[t]he conclusion, Maj. op. 1276. On this the was defective a prop is irrelevant because panel majority holds that we are barred petition Maj. er could have been drafted.” 314(d) reviewing compliance from op. at 1290. prohibited appellate Is this statutory limits of Inter Partes Re- nonappealable petition? review of the Or view. simply departure a curious from the funda majority acknowledges The that situa- action, mental rule of administrative may tions arise “where the has clear- agency decisions must be reviewable on ly indisputably exceeded its authori- appeal? Community In Block v. Nutri ty,” suggests possibly “mandamus Institute, 340, 104 U.S. S.Ct. may challenge be available to the PTO’s (1984),the elaborat 81 L.Ed.2d 270 Court grant petition decision to to institute judicial review of principle ed on IPR final after the Board’s decision.” The agency determinations. Court sum Maj. op. disputed by at 1290. This hint is marized: PTO, pointing to the Federal Circuit’s requirements strict for mandamus. particular and to what extent a Whether judicial review is de- precludes statute authority regarding The ultimate what a lan- only express termined not from its says applies judi- it statute how is the guage, but also from the structure of the ciary. purpose “nonap- scheme, statutory objectives, leg- its its pealable” provision apparently is to bar LLC, history, Licensing, Patent the nature Helferich islative Plaintiff-Appellant administrative action involved. 345, 104

Id. at S.Ct. v. requires adjust- thoughtful The statute Corporation, Defendant-Appellee CBS heavy- legislative purpose, ment Licensing, LLC, Helferich Patent any- handed foreclosure of all review Plaintiff-Appellant petition. thing related v. Conclusion Media, LLC, Defendant-Appellee Bravo pur- America Invents Act has “providing quick effective pose of and cost LLC, Licensing, Helferich Patent litigation.” H.R.Rep. alternatives No. Plaintiff-Appellant (2011), 112-98, pt. at 48 v. U.S.C.C.A.N. 78. The author- J.C.Penny Corporation, Inc., patents validity ized to review the of issued Defendant-Appellee. procedures, in accordance new decision, faster, reach the correct but 2014-1196, 2014-1197, Nos. 2014- and sooner than in district cheaper, 1198, 2014-1199, 2014-1200. panel majority imple- court. The fails States Appeals, United Court of statutory purpose. ment the

Federal Circuit.

Feb. LICENSING,

HELFERICH PATENT

LLC, liability an Illinois limited

company, Plaintiff-Appellant

v. COMPANY,

The NEW YORK TIMES Corporation,

a New York

Defendant-Appellee Penney Corporation,

J.C.

Inc., Defendant Media, LLC, Stores,

G4 The Bon-Ton

Inc., LLC, Corpo- Bravo Media CBS

ration, Party Third Defendants. LLC, Licensing,

Helferich Patent

Plaintiff-Appellant

v. Media, LLC, Defendant-Appellee

G4

Case Details

Case Name: In Re Cuozzo Speed Technologies, LLC

Court Name: Court of Appeals for the Federal Circuit

Date Published: Feb 4, 2015

Citation: 778 F.3d 1271

Docket Number: 2014-1301

Court Abbreviation: Fed. Cir.