*1 house, mortgage a senior lien and on her
juniоr mortgage outstanding lien. The In re CUOZZO SPEED mortgage lien ex- balance on senior TECHNOLOGIES, Bank the house’s current value. ceeded LLC, Appellant. junior mortgage lien was thus
America’s No. 2014-1301. completely underwater. “strip moved to off’ Bank of Waits Appeals, United States Court of 506(d) junior § America’s lien under of the Federal Circuit. Code, states, Bankruptcy “To the July 2015. against extent that a lien secures a claim the debtor is not allowed secured
claim, such lien is void.” 11 U.S.C. 506(d). bankruptcy granted court motion, and this Court affirmed.
Waits’s explained prior precedents our in In
We re (11th
McNeal,
Cir.2012),
and Folendore United States Small Administration,
Business
void a lien when the sen
ior lien exceeds the home’s value. Caulkett,
In Supreme Court vacated Eleventh
two Circuit decisions that fol reasoning. Supreme
lowed this same held “a in a Chapter
Court debtor 7 bank
ruptcy proceeding may junior not void 506(d)
mortgage lien under when the mortgage
debt owed on a senior lien ex
ceeds the current value of the collateral.”
Caulkett, U.S. -, at S.Ct. light Supreme holding Court’s Caulkett, holdings our in McNeal and
Folendore Accordingly, are overruled. affirming
district court erred in the bank-
ruptcy grant court’s of Waits’s motion to
strip off Bank junior of America’s lien. deny Bank
We of America’s motion for
summary reversal, vacate the district judgment affirming
court’s the bankruptcy
court, and remand for further proceedings
consistent with Caulkett and opinion. this
VACATED AND REMANDED.
BACKGROUND assignee Cuozzo is the of the '074 pat ent, entitled “Speed Limit Indicator and Displaying Method for Speed and the Rel Limit,” evant Speed which issued on Au Salmon, gust NJ, 2004. The Timothy Basking Ridge, M. '074 discloses argued appellant. represented by Also an interface which displays a vehicle’s cur Kasha, LLC, John Robert Kasha Law speed rent as well as the speed limit. Potomac, North MD. embodiment, one a red filter is superim posed on a white speedometer so that Solicitor, Nathan K. Kelley, Office of the “speeds legal above the speed limit are United States Patent and Trademark Of- displayed red ... while fice, Alexandria, VA, legal speeds argued for intervenor ” displayed Michelle K. white.... represented by Lee. Also Id. col. 5 ll. Scott *4 Weidenfeller, global Robert J. 35-37. A positioning McManus. system (“GPS”) unit tracks the vehicle’s location NEWMAN, CLEVENGER, Before and speed and identifies the limit at that loca DYK, Judges. Circuit tion. The red filter automatically rotates when speed the limit changes, so that the Opinion for the court filed Circuit speeds speed above the limit at that loca Judge DYK. displayed tion are red. The also Dissenting opinion filed Circuit speed states that the limit indicator Judge NEWMAN. take the form liquid of a colored crystal DYK, Judge. Circuit (“LCD”). 4-6, display Id. col. 3 ll. col. 6 ll. 11-14. In claim independent the (“Cuozzo”) claim Speed Cuozzo Technologies here, at (the issue a 6,778,074 display colored shows owns U.S. Patent No. “'074 limit, patent”). International, speed Garmin current Inc. and and the colored dis USA, “Garmin”) Garmin (collectively, play Inc. “integrally attached” to speed petitioned the United Patent States and ometer. Id. col. 71.10. (“PTO”) Trademark Office partes for inter Claim 10 recites: (“IPR”) 10, 14, review of claims and 17 of A speed limit comprising: indicator patent. granted '074 The PTO Gar- global positioning system receiver; petition min’s and instituted IPR. The Pat- display controller connected to said (the “Board”) ent Trial Appeal and Board global positioning system receiver, timely issued a finding final decision claims wherein display adjusts said controller 10, 14, and 17 obvious. The Board addi- a colored display response to sig- tionally denied Cuozzo’s motion to amend global nals from sаid positioning sys- patent by substituting '074 new claims tem continuously receiver to update 21, 22, 10, 14, and claims and 17. speed delineation of which read- Contrary contention, to Cuozzo’s we ings are in speed violation of the limit jurisdiction
hold that we lack to review the present location; at a vehicle’s and PTO’s decision to institute IPR. We affirm a speedometer integrally attached to determination, the Board’s final finding no display. said colored error in the Board’s claim construction Id. col. 7 ll. 1-10. Claim 14 is addressed to under the interpreta- broadest reasonable standard, speed tion limit “[t]he indicator as defined in Board’s obviousness de- termination, and the Board’s claim wherein display denial of said colored is a Cuozzo’s motion to amend. colored filter.” Id. col. 7 ll. 23-24. Claim (2) Wendt; and, alternatively, over and limit indicator as speed “[t]he
17 recites: Awada, Evans, display and Wendt. Tegethoff, said claim wherein defined filter inde said colored rotates controller motion The Board also denied Cuozzo’s continu speedometer to said pendently of claims patent by replacing to amend the of which the delineation ously update claims 10,14, 17 with and substitute of the are in violation readings speed of the motion 23. The Board’s denial present location.” at a vehicle’s speed limit claim 21.1 proposed centered on to amend ll. 5-9. Id. col. 8 21 would have amended Claim 16, 2012, filed a Garmin September On integrally at- speedometer claim “a of, IPR the PTO to institute with petition display, colored wherein tached to [a] 10, 14, '074 alia, and 17 the claims inter crystal dis- comprises liquid speedometer that claim 10 contended Garmin patent. display the colored play, and wherein under 35 anticipated U.S.C. was invalid as crystal display.” J.A. 357-58. liquid 102(e) under 35 U.S.C. § or as obvious be- rejected Board the amendment 103(a) claims 14 and 17 were § (1) claim 21 lacked written cause substitute 103(a). The PTO institut- under obvious required by description support IPR, determining that there was a rea- ed (2) the substitute claims U.S.C. likelihood claims sonable enlarge improperly would (1) under 103 over U.S. 17 were obvious by the Board. claims as construed 3,980,- 6,633,811 (“Aumayer”), Patent Nos. intervened, The PTO appealed. *5 (“Wendt”); (“Evans”), 2,711,153 granted motion to with- and we Garmin’s (2) Patent No. 197 55 German and/or jurisdiction to appellee.2 as We have draw 6,515,596 Patent No. (“Tegethoff’), U.S. under the Board’s final decision review (“Awada”), Evans, Although and Wendt. 1295(a)(4)(A). § U.S.C. respect to claim 17 petition with Garmin’s grounds on which the PTO included DISCUSSION review, list petition did not
instituted for claim 10 or Wendt Evans or Wendt I claim 14. in proceed phases. IPRs two St. Jude decision, final subsequent In its Med., Div., Cardiology Inc. v. Volcano appropriate explained “[a]n Board that (Fed.Cir. Corp., 749 F.3d 1375-76 ‘integrally of the term at- construction 2014). In phase, the first the PTO deter independent claim 10 is central tached’ IPR. In the mines whether to institute patentability analysis of claims to the the IPR phase, second the Board conducts applied a and 17.” J.A. 7. The Board a final decision. Id. proceeding and issues stan- broadest im argues that the PTO Cuozzo “integrally term dard and construed the 10 and properly instituted IPR on claims meaning parts phys- “discrete attached” as prior on art 14 because the PTO relied joined together a unit without ically as identify petition in its that Garmin did not part losing separate identity.” its own each grounds for IPR as to those two claims 9. The Board found that claims J.A. question art in iden (though prior under unpatentable and 17 were as obvious 17). 103(1) Evans, Aumayer, respect § tified with to claim Under 35 U.S.C. over parties separately 2. filed a motion to withdraw because 1. do not address claims Garmin participate any appeal of apparently agree agreed not to 22 and 23 and that the mo- part of a settle- pres- written decision as tion for leave to amend on those claims IPR agreement with Cuozzo. claim 21. ment ents the same issues as ” statute, any petition 318(a).’ for IPR must “iden- under [Board] section (quot Id. tif[y] particularity 141(c)) (alterations ... with ... ing § 35 U.S.C. orig grounds challenge inal). on which the to each But while § we stated that 312(a)(3). § claim is based...." 35 U.S.C. “may preclude well all by any review argues may only that the PTO route,” we did not decide the issue. Id. at grounds institute IPR based on identified petition because Director “[t]he 314(d) § We conclude that рrohib not an partes authorize inter review to be its review of the decision to institute IPR instituted unless the Director determines even face, after a final decision. On its that the information presented peti provision is not directed to precluding re ... any response tion ... that shows view before a final decision. It is there is a reasonable likelihood that written to exclude all review of the deci 314(a). petitioner prevail.Id. § would sion whether to institute- review. Section 314(d) Section is entitled “No appeal” 314(d) provides that the decision is both provides that “[t]he determination “nonappealable” “final,” i.e., not sub to, the Director whether institute inter ject 314(d). to further § review. 35 U.S.C. partes under review this section shall be A declaration that the decision to institute final and nonappealable.” 35 U.S.C. is “final” reasonably cannot interpreted be 314(d). 314(d) § argues § The PTO that as postponing until review after issuance precludes review a determination to in- of a final decision patentability. on More 314(d) argues § stitute IPR. Cuozzo over, given 141(c) § 319 and al completely does not preclude review of the ready appeals limit to appeals from final IPR, decision to institute but instead 314(d) decisions, § would have been unnec merely postpones review of the PTO’s au- essary to preclude non-final review of in thority until after the issuance aof final 314(d) stitution decisions. Because decision the Board. unnecessary interlocutory to limit appeals, 314(d) previously We have addressed it must be read to bar review of all institu *6 and have held that precludes it interlocu- decisions, tion even after the Board issues tory review of decisions whether to insti- a final decision. Nor does the IPR statute Jude, tute IPR. In St. we characterized expressly limit authority the Board’s at the 314(d) § a “broadly as worded bar ap- on final decision stage grounds alleged to the 314(d) peal” § and held that “certainly in petition. the IPR simply It authorizes
bars” interlocutory review of the PTO’s the Board to issue “a final written decision petition denial of a for IPR. 749 F.3d at respect with to patentability any of This supported by 1375-76. result was challenged by petitioner claim § which “authorizes appeals to this any new claim added under section only court from ‘the final written decision 316(d).” 318(a). § 35 U.S.C. of the [Board]....’” Id. at 1375 (quoting Co., Our decision in In re Hiniker 150 319) (alteration § 35 original). U.S.C. (Fed.Cir.1998), F.3d confirms Similarly, interlocutory the bar to review position correctness of the PTO’s here. 141(c), § is supported 35 U.S.C. which There, provision comparable even absent a appeal only by “authorizes ‘a party to an 314(d),3 partes § inter ... to review who is dissatisfied we held that a flawed decision with the final written decision of the to institute reexamination under 35 U.S.C. § 3. Unlike question patentability the reexamination statute of has been raised will only provides that nonappealable.” "[a] determination be final and 35 U.S.C. 303(c) added). (1994) (emphasis § Commissioner ... that no substantial new printed publica- or consisting patents setting aside a basis for § not a was The answer Hiniker, tions.” 35 U.S.C. F.3d at 1367. final decision. Hiniker, available to chal- that mandamus be at issue the statute Under grant peti- to lenge if the PTO’s decision only instituted could be reexamination Board’s final IPR after the that there tion to institute determined the Commissioner has the PTO decision in situations where patent- question new “a substantial was exceeded its au- clearly indisputably i.e., not considered prior art ability,” new 303(a) thority. 35 U.S.C. by the examiner. (1994). Hiniker, instituted the PTO argues previous that our deci- The PTO art consid- prior on based reexamination In In re Do- preclude sions mandamus. (Howard). examination original in the ered Solutions, LLC, 749 F.3d minion Dealer Hiniker, But the PTO’s at 1365. (Fed.Cir.2014), we held (which had not relied on East final decision to chal- relief was not available mandamus initial in the the examiner been before IPR. petition of a lenge the denial examination) invalid. finding the claims scheme, statutory there was no Given the “ jurisdiction that our at 1366. We held
Id.
right’
challenge
indisputable
‘clear
appeal from the
Hiniker’s
only
“over
directly in this
a non-institution decision
the Board.” Id. at 1367.
decision
[final]
court,”
for mandamus.
Id.
required
have been
decision would
the final
While
Co., 749
in In re Procter & Gamble
And
improperly
if
had
subject to reversal
(Fed.Cir.2014), we held
1378-79
to the
рrior
presented
on
art
relied
to pro-
mandamus was not available
examiner,4
reexam-
instituting
error
of a
vide immediate review
decision
reference
on the Howard
ination based
IPR. There was no “clear and
institute
the reexamina-
during
clean
was “washed
court’s immediate
indisputable right to this
relied on new art.
proceeding,”
tion
an inter
of a decision to institute
review
petition
that the
was defective
Id. The fact
review, as would be needed for
partes
proper petition
irrelevant because
Id. at 1379. Further-
mandamus relief.”
The same is
have
drafted.
could
been
more, that
not one of the rare situa-
“[wa]s
314(d)
here,
explicit-
clearer
where
even
interim harm
tions in which irremediable
appeal
no
avail-
ly provides
mandamus,
that there is
justify
which is unavail-
c[ould]
There was
of a decision to institute.
able
simply
patentee]
to relieve
[the
able
finding claims 10 and
no bar here to
through
partes
the inter
going
burden of
omitted).
(citation
However,
on the Evans
unpatentable based
Id.
and/or
review.”
The failure to cite
Wendt references.
question
we did not decide the
whether
petition provides
those references
is reviewa-
the decision to institute review
*7
setting aside the final deci-
issues a
ground
no
for
mandamus after the Board
ble
review is
sion.
final decision or whether such
314(d).
§
do we do
Id. Nor
precluded
argues
Congress
that
would
so now.
to allow the PTO to
not have intended
§
manda
Even if
314 does not bar
in direct contravention of the
institute IPR
decision,
statute,
final
at least “three
grounds
prior
on
of
mus after a
example,
for
writ
[a
must be satisfied before
permits
use where the IPR statute
conditions
public
Cheney v. U.S.
“prior
the
of
art
of
issue.”
petitions
mandamus]
on
basis
(Fed.Cir.1996).
Inc.,
110 F.3d
1275
D.C.,
367, 380, unpatentable.
Dist. Court
U.S.
Whether or not the PTO is
for
(2004).
satisfied since review is unavail “Second, petitioner satisfy able. must Cuozzo contends in addition that showing right ‘the burden of that his to the Board erred in finding the claims obvi indisputa issuance of the writ is clear and ous, arguing initially that the Board should ” (internal 381, 124 ble.’ Id. at S.Ct. 2576 not applied have the broadеst reasonable citation, quotations, and alterations omit interpretation standard in claim construc ted). “Third, court, issuing tion. discretion, exercise of its must be satisfied appropriate that the writ is under the cir A (citation omitted). cumstances.” Id. (“ALA”) The America Act Invents creat IPR, ed but statute on its face does not Here, Cuozzo has not filed a man resolve the issue of whether the broadest if petition, damus but even we were to interpretation reasonable ap standard is treat its appeal request for mandam IPRs; propriate in it is silent on that us,5 the far satisfy situation here is from However, conveys issue. the statute rule- ing clear-and-indisputable requirement authority making to the PTO. It provides for mandamus. It is not clear that IPR is that prescribe regula Director shall “[t]he strictly limited to the grounds asserted in tions,” alia, “setting inter forth the stan petition. urges The PTO institut dards for the showing grounds sufficient ing IPR of claims 10 based on the review,” ... “establishing institute grounds for claim 17 proper was because governing partes inter ... review depends claim 17 from claim which relationship of such review to other depends from claim Any grounds 316(a)(2), § proceedings....” 35 U.S.C. which would invalidate claim 17 would (a)(4). necessary implication authority, Pursuant to this also invalidate claims promulgated 10 and 14. PTO has Callaway See Co. v. 37 C.F.R. Golf Co., (Fed. 42.100(b), Acushnet provides claim “[a] Cir.2009) (“A independent unexpired patent given broader claim shall be its сannot be nonobvious where a dependent light broadest reasonable construction in stemming claim from that independent specification in which obviousness.”). 42.100(b). claim is appears.” invalid for 37 C.F.R. Cuoz argues implicitly argues that Garmin assert zo that the authority PTO lacked 42.100(b) ed that claims unpatent promulgate 10 and were and that able when it asserted that claim 17 broadest stan- *8 Wright, attempted appeal 5. See 16 Charles A. 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) ("Many Procedure 3932.1 ed. (citations petition treated as a for a writ.” seemingly propo- cases illustrate the converse omitted)). appeal sition that ... an can substitute for a 1276 (Fed.Cir. Ctr., 1359, in an adjudicatory Tech 367 F.3d 1364 inappropriate
dard is 2004) argues (“Giving The PTO that claims their broadest proceeding. IPR 35 rea necessary public au- sonable construction ‘serves the in provides U.S.C. 316 by reducing possibility terest that promulgate to thority to the PTO claims, 42.100(b) allowed, finally given will be broad and that broadest reason- ” justified.’ scope (quoting er than is In re interpretation appropriately applied able Yamamoto, (Fed.Cir. 1569, 1571 in the IPR context.
1984)));
Morris,
1048,
In re
1054
(Fed.Cir.1997) (“[W]e reject appellants’ in
rH
vitation to construe either of the cases
addressing
of the
Before
overrule,
by appellants
cited
so as to
sub
rulemaking authority, we consider
PTO’s
silentio, decades old case law....
It would
in-
history
of the broadest reasonable
be inconsistent
assigned
with the role
to
bearing
and the
of
terpretation standard
issuing
the PTO in
a
to
patent
require
to
history
interpretation
on the
of the
interpret
claims
the same manner as
patent
IPR
section of the
statute. No
who,
judges
post-issuance, operate under
explicitly provides that the
statute
broad-
assumption
is valid. The
interpretation
est
standard
reasonable
process
patent prosecution
anis
interac-
shall or shall not be used in
PTO
one.”);
Carr,
tive
In re
F.
297
544
proceedings.
(“For
(D.C.Cir.1924)
this reason we have
Nonetheless, the broadest
in
reasonable
uniformly
given
ruled that claims will be
terpretation
applied by
standard has been
interpretation
the broadest
they
which
predecessor
the PTO and its
than
more
reasonably
susceptible.
are
This rule is a
years
types
100
in various
of PTO proceed
one,
reasonable
tends not
pro-
ings. A 1906 PTO decision explained,
invention,
tect
the real
prevent
but
method
construing
“[n]o better
claims is
litigation
needless
after the
has is-
perceived
give
than to
them in each case
sued.”);
Kebrich,
In re
40 CCPA
201
interpretation
they
the broadest
which
will
(1953) (“[I]t
F.2d
...
well set-
support
straining
language
without
...
tled that
the tribunals
[of
PTO]
they
are couched.” Podlesak v.
and the reviewing courts in the initial con-
McInnerney, 1906 Dec. Comm’r Pat.
patentability
sideration of
give
will
claims
century,
258. For more than a
courts
which,
interpretation
broadest
within
See,
approved
have
e.g.,
standard.
reason, may
applied.”).
be
Young,
App.D.C.
Miel v.
(D.C.Cir.1907) (“This claim
given
should be
This
approved
court has
the broadest
interpretation which it will broadest
stan
Rambus, Inc.,
support....”);
In re
in variety
dard
of proceedings, including
(Fed.Cir.2014)
(“Claims
examinations,
interferences,
initial
generally
their
given
‘broadest reason
post-grant proceedings such as reissues
interpretation’
able
consistent with the
Indeed,
and reexaminations.
that stan
(cita
specification during reexamination.”
applied
every
dard has been
pro
omitted));
tion
In re Am. Acad.
ceeding involving unexpired
Sci.
patents.6 In
expired patent
patent,
patentee
The claims of an
are the one
is unable to make claim
exception where the broadest reasonable in-
applies
amendments and the PTO
the claim
terpretation
patentee
is not used because the
principles
construction
outlined
this court
Rambus,
is unable to amend the claims.
(Fed.
Phillips
Corp.,
v. AWH
1277
so,
doing
long history
Kyi)
we have cited the
(allowing written statements to be
giving
the PTO’s
claims their broadest rea
considered in
partes
inter
review “should
See, e.g.,
sonable construсtion.
Yama
... allow the Office to identify inconsistent
(reexamina
moto,
Moreover,
Congress
enacting the AIA scope of the claims of
or intro-
316(d)(3).
was well aware that the
matter,”
broadest reason-
duce new
id.
interpretation
able
standard was
pre-
regulations
provide that
“[a]
vailing
Cong.
rule. See 157
Rec.
S1375 owner
file one motion to amend a
8, 2011) (statement
(daily ed. Mar.
patent,
of Sen.
but
after conferring with the
See,
Yamamoto,
e.g.,
consistently
Board.” broadest reasonable stan- that one substitute sumption only claim dard —that language claim can be modified replace each be needed to chal- problems PTO, would when are identified in the claim, may and it be rebutted lenged supra see note 7—does not turn on wheth- demonstration of need.” Id. er the PTO problems by identifies the 42.221(a)(3). § The statute also provides adjudication Indeed, or examination. may “[a]dditional that motions to amend proceedings interference are also in some permitted upon joint request be the of the adjudicatory, Miller, sense see Brand v. petitioner the owner ... or as (Fed.Cir.2007) (char- 867-68 permitted by regulations prescribed by the acterizing proceedings interference as ad- 316(d)(2). § “A Director.” 35 U.S.C. mo- judicatory holding that the Board’s tion to amend denied where” be the record), decision be on the yet reviewed respond not amendment either to “does interference proceedings use a variant of ground unpatentability involved in the the interpretation broadest reasonable enlarge trial” or to [IPR] “seeks the scope standard, Genentech, see Inc. v. Chiron the of the claims of or introduce (Fed.Cir.1997) 112 Corp., 500 subject new matter.” 37 C.F.R. (“In the absence of ambiguity, it is funda- 42.221(a)(2). § mental that language the of a should count given be the broadest reasonable interpre-
Although opportunity the to amend is support....” tation it will IPR setting, (quoting cabined is thus none- re Baxter, (CCPA Here, 1981))). only available. proce- theless ground rejecting dural for We Congress conclude that implicitly ap- amendment proposed enlarged proved that Cuozzo was that it the broadest interpreta- reasonable claims, in of the violation of tion standard enacting the AIA. 316(d)(3). § post-issuance A bar on
broadening long part pre-IPR has been processes precedent approved if Even we to were conclude that use of the broadest reasonable construc- Congress did not approve itself the broad (reissue §§ tion. See 35 U.S.C. be- est reasonable interpretation standard in (reexamination). yond years), § two id. AIA, enacting provides authority Thus, amendment restriction at to the PTO adopt standard issue this case not distinguish pre- does 316(a)(2) regulation. provides Section processes IPR or undermine the inferred the PTO shall estаblish regulations “set congressional authorization of the broadest ting forth the showing standards for the reasonable standard in sufficient grounds to institute a re If challenges IPRs. there are to be 316(a)(2). view....” 35 U.S.C. Section brought against other restrictions on 316(a)(4) provides the further PTO with opportunities amendment as incompatible authority for “establishing and governing using with the broadest reasonable inter- inter partes under this chapter review standard, pretation they must await anoth- of such relationship review other er case. under this title.” Id. 316(a)(4). congressional approval inference broadest in longstanding terpretation PTO construction stan- standard affects both the dard also is not PTO’s undermined the fact determination of whether to insti IPR may adjudicatory be said to tute IPR proceedings be and the proceedings rather than an examination. The after re- institution and is within the PTO’s peatedly stated using authority rationale for under the statute. Congress
Because
authorized the
terpretation
through
standards
the general
prescribe regulations,
validity
PTO to
language of the IPR provisions.' Never-
*11
regulation
analyzed according
of the
is
to theless,
§
the language of 316 readily cov-
the familiar Chevron framework.
See
specific
ers the
action the PTO has taken
United
v.
Corp.,
States Mead
533 U.S.
here, which is the opposite of a sharp
226-27,
121 S.Ct.
Wendt Evans, Aumayer, to the to arrive at cup is attachable suction Wendt which analog has embodiment. does not speedometer. of a The indicator Cuozzo cover secondary is rotatable to indicate the contend that considerations pointer argue against finding limit. of obviousness. speed current Evans, Aumayer, 10 would have been obvious over argues that Claim Evans, Aumayer, “continuously do not disclose and Wendt because and Wendt speed encompasses analog embodiment of updating] the delineation of which readings speed specification. are in violation of the limit the invention discussed location,” present required We need not address whether claim 10 is at a vehicle’s *14 Awada, Tegethoff, '074 ll. In Ev- claim 10. col. 7 6-9. also obvious over ans, Wendt, Aumayer Cuozzo contends that and as the Board also conclud- particular, updating speed limits associated ed. discloses geographic a and not with a region
with D locating position determined the GPS device. The Board found that “it is indis Finally, the we consider whether putable Aumayer displays speed motion for properly Board denied Cuozzo’s amend, limit for the current location of a vehicle as finding leave to that Cuozzo’s sub receiver, by a and not enlarge scope determined GPS stitute claims would merely limit a speed patent. certain class Cuozzo moved to substitute given following in a claim 10 substitute claim region of road without with the connection to the vehicle’s current loca 21: finding sup
tion.” J.A. 34. The Board’s speed comprising: A limit indicator ported by substantial evidence. global system a positioning receiver de- location, termining present a vehicle’s argues also that there is no moti- present a a speed speed vehicle’s Evans, Aumayer, vation to combine location; present limit at the vehicle’s Aumayer Wendt because is an automatic display while Evans and manual a controller connected to device Wendt are said However, receiver, “[a]pplying global positioning system devices. modern adjusts display electronics to older mechanical has wherein said controller devices years.” response sig- been a commonplace display recent colored Enters., Fisher-Price, Leapfrog speed Inc. nals limit at v. indicative Inc., (Fed.Cir.2007). present 485 F.3d the vehicle’s location from global positioning system
said argues receiver claims. Cuozzo that the proposed continuously update the delineation claims were not broadening and instead speed readings of which determined copied limitations from dependent two global positioning system re- patent. claims ceiver are in violation of speed Based on proper construction of the location; present limit at the vehicle’s phrase attached,” “integrally agree we with the PTO that proposed Cuozzo’s speedometer integrally a attached to amendment broadening. Cuozzo itself display, said colored argues that the motion to amend was de- speedometer comprises wherein the solely nied because of the interpre- PTO’s crystal liquid display, and “integrally attached,” tation of argues display liquid wherein the colored is the only that a remand is necessary if we were crystal display. to reverse the Board’s claim construction (which J.A. 357-58. done). we have not Cuozzo admits that the Board’s “integrally construction of The statute and regulation attached” “excludes the single em- LCD bar amendments which would broaden the bodiment of the invention in which the 316(d)(3); scope of the claims. 35 U.S.C. speedometer includes an LCD that is the 42.221(a)(2)(h). past, 37 C.F.R. In the display.” colored Appellаnt Br. 33. Pro- requirement we have construed this posed claim 21 recites “a speedometer in- context reissues and reexaminations. tegrally attached to said contexts, display, colored applied both we have the test speedometer wherein the comprises liq- that a claim “is broader in than the crystal uid display, and wherein original claims if it contains the col- within its ored scope any apparatus display liquid crystal display.” conceivable or is the pro added). infringed (emphasis cess which would not have J.A. 358 The word Tillotson, original patent.” “the,” v. emphasized Ltd. Walbro quoted language (Fed.Cir. Corp., above, 1037 n. 2 requires single-LCD embodiment 1987) (in context); the reissue see In re includes both the speedometer and Freeman, (Fed.Cir. display the colored in one Because LCD. 1994) Tillotson, (quoting at claim 21 proposed encompass would 2) (in context). n. the reexamination encompassed by embodiment not claim *15 applies same test context IPRs. it broadening, and the motion to amend Therefore, inquire we whether Cuozzo’s properly denied.
proposed substitute claims would encom AFFIRMED. pass any apparatus process or that would by not have been original covered Dissenting opinion filed Circuit claims.9 The Board held that claim 21 was Judge NEWMAN. broadening because it encompass would NEWMAN, Judge, dissenting. Circuit single-LCD embodiment wherein both the dissent, respеctfully I speedometer display panel and the colored are for the ma- LCDs, which was not within original jority’s rulings contrary Leahy- are to the claim, argues original respect though that its substitute claim is than the even narrowing single- respects.” because it is limited to the be narrowed in other re 733, 601, longer Rogoff, LCD embodiment and no would en- 46 CCPA (1958); Co., compass Senju the mechanical embodiment. This see also Pharm. Ltd. v. Inc., 1344, argument (Fed.Cir. broadening. Apotex misstates test for 2014). “[A] claim is broadened if it is broader in Act, Invents
Smith America Pub.L. No. As a departure further from legisla- (2011) (effective 112-29, 125 Sep- Stat. plan, majority tive holds the “final 2012). tember nonappealable” statutory provision re- lating to whether to post-grant institute The America Invents Act established “ §314(d) proceedings means that ... must post-issuance patent systems, new review be read to bar review of all institution purpose “providing quick for the decisions, even after the Board issues a litigation.” cost effective alternatives to Maj. final decision.” op. at 1273. This 112-98, (2011), H.R.Rep. pt. No. at 48 restraint could bar review of information purpose U.S.C.C.A.N. 78. This material to the final PTAB judgment, and achieved new of proceedings forms inmay impede judicial turn full review of Office, the Patent and whereby Trademark the PTAB’s decision. This further dimin- adjudicatory body, a new called the Patent ishes the role of the PTO as a reliable (PTAB), Trial Appeal Board serves as patent arbiter of validity. for surrogate litigation district court patent validity. adjudicative These pro- aspects Several other of the America ceedings in the designed PTO are “to re- Act confusingly Invents are treated in the validity patent view the of a ... in a court- majority opinion. For example, as Cuozzo proceeding.” 112-98, like H.R.Rep. No. out, points here the PTAB decision relies pt. at 2011 U.S.C.C.A.N. 92. The arguments on and evidence that had not goal is improved service to technology- Institute, been raised in the Petition to innovation, based and thus to the national although requires the statute argu- that all interest in creative advance and industrial ments and presented evidence must be growth. panel The majority thwarts the the Petition. panel The majority states statutory plan in ways. several fact petition “[t]he that the was defec- First, panel majority tive is irrelevant proper holds that the because a petition PTAB, in conducting these adversarial could have Maj. been op. drafted.” at post-grant proceedings, need not and 1274. Such casual disregard of this statuto- apply should not same claim ry provision intended, cannot have been required construction as is applied to be legislation, prece- sets dubious Instead, the courts. panel majority dent responsible proceedings. treating ratifies' the claims of an issued post-grant proceеdings established if they proposed claims by the America Invents Act were intended in the patent application examination as a far-reaching surrogate for district stage, proposed when subject claims are court validity determinations. prem- the “broadest reasonable interpretation” ise is that an adversarial evidentiary pro- examination expedient. The panel majori- ceeding in the PTO can reliably resolve ty precludes thus achieving adjudi- PTAB *16 patent most issues of validity, without the cation patent validity comparable to that expense delay and of district court courts, litiga- of the district validity where tion, and sometimes even before infringe- determined on legally correct claim ment construction, has occurred. today not an The court artificial temporary proceedings “broadest” moves these new in construction. directions The “broadest” construction is inimical designed to to the content provisions facilitate exami- and nation grant, before not to Act, confound the America litiga- Invents impeding the tion after grant. statutory purpose. (Feb. 2012) (“The Reg.
I pur- pose ... is to establish a more efficient Proceedings as PTO Post-Grant and streamlined system that will Surrogate for District a improve patent quality limit and unneces- Litigation Court sary counterproductive litigation discussion, During years hearings, six costs.”). An achieving obstаcle to this pur- negotiation, among and collaboration pose is the refusal of the PTO to construe technology-based industry, communities of in patent claims accordance with the law of inventors, legislators,'scholars, bar associa- claim construction that applied in the tions, public, and the concerned solution courts—an obstacle now endorsed sought major problem confronting to a Federal Circuit. States industrial advance: the bur- United Claim construction step is the first in geoning patent litigation accompa- and the cost, nying delay, determining validity and overall disincentive of patent claims. to investment in innovation. In an adjudicatory proceeding for issued patents, the claims must be construed in efforts,
The fruit of these the America accordance with In establishing law. this Act, creative, thoughtful, Invents is a adjudicatory system PTO, new ambitious statute whose cornerstone is the record shows no debate about whether the patent validity disputes shift of from the PTO, deciding in validity of issued expert agency previously courts to the that patents, apply should a primarily was concerned with examination different law from patentability. Previously, disputes the law in applied the courts. The Amer- validity patents of issued were the exclu- ica plainly contemplated Invents Act that Now, province sive of the courts. the new PTO tribunal would determine Ameriсa Invents Act not authorizes validity patents of issued on legally litigation-type the PTO to conduct adver- factually construction, correct claim to proceedings sarial decide validi- not on hypothetical expedient “broadest” ty, proceedings but also authorizes such as is proposed used examination of “controversy” even when there is no under pending claims in applications. n Article III. Act, The America in authorizing Invents premise of the America Invents Act validity by the PTO to determine conduct- is that these new PTO will ing adversarial proceedings, including dis- decision, provide early a reliable tech- covery, witnesses, depositions, experts, adjudicators, nology-trained patent-sawy arguments, briefs and is designed to reach with economies of time and cost. See PTO, the correct result the same (Nov. 2011) (state- Cong. Rec. S7413 correct result as the district courts. See (“The Smith) Rep. ment of new transition- 112-98, H.R.Rep. No. pt. at program inexpensive al ... creates an (describing U.S.C.C.A.N. these new speedy alternative litigation allowing — post-grant proceedings “adjudicative parties [disputes] to resolve than rather systems” comparable district court va- spending litigation millions of dollars determinations). lidity legislative This costs.”). fails purpose when the PTO tribunal uses goal improve is to the climate for construction, claim different standard of activity, investment аnd industrial while require standard does not the cor- facilitating the of patents removal rect claim construction. improvidently granted. were Changes See *17 legislative sup- The record contains no Implement to Program Transitional for Patents, Business Method port majority’s Congress Covered for the view that Fed. readily are amend- proposed new PTO tribunal need where claims that the intended patents give-and-take patent prosecu- the claims of issued ed in the of not construe record does not correctly. legislative However, patent tion. after the has is- intent issued congressional show a sued, announcing property right on readily more patents should be invalidated patentee public rely, the and the the than in the in these PTO correctly. Ab- claims must be construed courts, the into inval- by broadening claims to the correct construc- sent commitment distorts, in- idity. procedure This PTO tion, adjudication for fails this new forum- defeats, legislative purpose of deed of an effective deter- purpose providing its surrogate an for administrative providing validity. failure cannot mination of This patent of va- court determination district legislators supporters what the of be lidity. Act intended when the America Invents correctly claims must be con- Patent they an authorized the PTO establish validity infrinyement for for as strued pat- administrative tribunal to determine validity through adjudicatоry process. ent claims, patent
The construction of
their
meaning
scope,
and their
is the foundation
interpretation”
“Broadest reasonable
Lighting
Bal
patent
of
law. As stated
expedient,
an examination
not the law of
Philips
v.
Electronics
last Control LLC
claim construction
Corp., “[l]egal
America
doctrine
North
interpretation
The broadest reasonable
starts with the construction of
patent law
of
is authorized for use
examination
claims,
for the claims measure
applications,
applicant
as the
pending
legal rights provided by
patent.”
the examiner interact to define the inven
(Fed.Cir.2014) (vacated
on
distinguish
overlap
tion so as to
or avoid
grounds).
legal rights
other
These
must
Zletz,
art.
In re
prior
with
See
893 F.2d
rights,
fuzzy
the “correct”
not some
be
(Fed.Cir.1989) (“an
319, 321-22
essential
“broadest” measure.
examination
purpose
fashion
Patent claims are construed as a matter
clear, correct,
precise,
claims that are
law,
specification,
as limited
unambiguous.”)
purpose
Id. The
of con
history,
art.
prosecution
prior
and the
struing
broadly during
claims
examination
Phillips
Corp.,
v. AWH
1287
1571;
not
in-
Hyatt,
opportunity
In re
is
available
an
F.2d at
see
(the
(Fed.Cir.2000)
broad
fringement
action in district court.
appli
“is not unfair to
interpretation
est
judicatorg process (describing post-grant proceedings and “adjudicative Inter Partes Review as sys- majority The adjudicatory discounts the tems”). Report The House states: purpose of these new proceedings. majority states that inference of “[t]he Unlike reexamination proceedings, congressional approval longstanding provide only a limited basis on PTO construction standard also is not un- which to consider whether a dermined the fact that IPR be said issued, post-grant should have re- adjudicatory to be rather than an examina- proceeding permits view a challenge on Maj. tion.” op. at contrary, 1278. To the any ground invalidity related to under these adjudication differences between section 282. post- The intent of the examination years are the fruit of six grant process review is to early enable planning, produce a new adversarial challenges to patents.... The Commit- system in the PTO. new, tee believes that early-stage this congressional process challenging extensive patent validity criticism of partes now-discarded inter reexamina- ... patent system will make the more Williams, Hoekel, 1. See Andrew E. Update PTAB Opposed PTAB Grants First Motion — The (At Board Grants Its Second. Amend Appeal Motion to to Amend Claims-Patent Trial and (Jan. 8, 2015), Part), Board, Least in (January Patent Docs The National Law Review 2015), http://www.patentdocs.org/2015/01/ptab- http://www.natlawreview.com/article/ update-the-board-grants-its-second-motion-to- ptab-grants-first-opposed-motion-to-amend- amend-at-least-in-part.html; claims-patent-trial-and-appeal-board. see also Jennifer improve quality pat- quick efficient and and cost effective alternatives to patent system. ents and the litigation.
Id. at 46. 112-98, H.R.Rep. (2011), No. pt. at 48 2011 U.S.C.C.A.N. partes
Inter
review under the America
designed
Invents Act is
to achieve the
The “broadest
interpreta-
validity proceedings
benefits of
in the dis-
tion” examination protocol has no role in
*20
words,
trict courts.
In the PTAB’s
“[a]n adjudication
validity
of
in the courts. Cor-
partes
inter
review is neither a patent
adjudication
rect
of validity requires cor-
reexamination,”
examination nor a
construction,
rect claim
not thе broadest
trial, adjudicatory
but
is “a
in nature
construction. These new
proceedings
PTO
litigation.” Google
constitutes
Inc.
[which]
place
have no
inapplicable
for this
expedi-
Techs., LLC,
v. Jongerius Panoramic
ent.
IPR2013-00191,
(Feb.
50,
Paper No.
at 4
public
notice function of claims is
2014).
13,
apply-
The PTO’s insistence on
by
interpretation
defeated
a “broadest”
ing the same artificial claim construction
scope
of claim
methodology as in pre-grant examination
These new proceedings are intended to
curious,
negation
is
indeed a
pur-
of the
an
provide
efficient test of the notice to the
pose
obligation
adjudicato-
and
of this new
public as to
by
what is covered
the claims.
ry process.
The public interest
scope
the actual
of
adjudicatory process
To conduct this
as
claims,
the
correctly construed —not their
actions,
surrogate
the intended
for court
interpretation.
broadest
Uniformity in
the PTAB
apply
must
the same law as is
claim construction is critical to
“a
avoid
required
By impos-
of the district courts.
zone
uncertainty
which enterprise and
ing
protocol
of broadest
experimentation may
only
enter
at the risk
interpretation,
panel
the PTO and the
ma-
infringement
claims
would dis-
[that]
jority
legislative
frustrate the
purpose.
courage
only
invention
a little less than
The PTO tribunal cannot serve as a surro-
unequivocal
foreclosure of
the field.”
gate for district court
litigation if the
Instruments,
Inc.,
Markman v. Westview
PTAB
apply
does not
the correct claim
1384,
517 U.S.
116 S.Ct.
construction, but deliberately applies a
(1996).
L.Ed.2d 577
possibility
“broadest” construction. The
112(b)
Section
of Title 35 states: “The
error,
result,
unreliability
cannot be
specification shall conclude with one or
salvaged by the possibility that sometimes
particularly
more claims
pointing out and
it
not matter to the result. These
distinctly claiming
subject
matter
procedures
new
will become no more than
joint
which the inventor or a
harassment,
inventor re
delay,
tactical vehicle for
gards as the invention.” As the
expenditure, despite
Congressional
illustrates,
warning:
situation
interpre
the broadest
tation
inis
tension with the role of the
While this amendment
is intended to
specification,
prosecution
as well as the
remove current disincentives to current
history,
provides
not
informa
processes,
administrative
changes
tion to
public
made
about the
it are not to be
used as tools
meaning
claims,
for harassment or a
but
prevent
long-
means to
also is
entry through repeated
recognized
market
source
litigation
of claim
Idec,
and administrative attacks on
Biogen
the validi-
limitation.
Inc. v. Glax
ty
patent.
LLC,
of a
Doing
so would frustrate
oSmithKline
713 F.3d
purpose
(Fed.Cir.2013);
of the section
providing
as
Corp.
see Vitronics
v. Con
(Fed.
operates
is entitled
Inc.,
statute under which
ceptronic,
Cir.1996) (the
deference,
history “consti
is con-
prosecution
to some
‘this deference
patentee’s
record of the
public
obligation
our
to honor
tute[s]
strained
public
claim,
on which
statute,
a record
meaning
clear
of a
as revealed
precedent
Decades of
rely.”)
entitled to
history.’”
Se.
language, purpose,
its
are construed and
claims
how
instruct how
Davis,
Cmty.
442 U.S.
99 S.Ct.
Coll. v.
litigating
when
over
validity is determined
(1979)
(quoting
The decision to institute argues petition to institute Inter Partes Review was improperly granted. The statute does The America Invents Act states that the preclude judicial not review of whether the PTO’s decision whether institute review statute applied in accordance with its nonappealable.” is “final and 35 U.S.C. legislated scope. 314(a). majority states that “On its Conclusion
face, provision is not directed to prе- cluding review before a final decision. The America Invents Act was enacted to It is written to exclude all review of the issues, enable the PTO to validity resolve decision whether to institute review.” at delay. reduced cost and goal This *22 Maj. op. at 1273. The statute does not defeated preservation the court’s mean that all information presented with PTO’s regulatory new discrepancy be- petition to institute is barred from validity tween determinations under the consideration appeal on of the final deci- America Invents Act the district sion. courts. purpose of invigorating the incentive patents, by role of providing a purpose The stated of the “final and faster, cheaper, and reliable determination nonappealable” provision is to control in- validity patents of issued is thus terlocutory delay harassing filings. benefit, derogation undercut —to no and in However, review not barred of material once-promising legislative this initiative. aspects that were decided connection with petition to institute. In Bowen v.
Michigan Academy Family Physicians, 667, 670, 476 U.S. 106 S.Ct. (1986),
L.Ed.2d 623
explained
Court
the beginning
“[f]rom
‘our cases [have
Cathy APPLEBERRY, Petitioner
judicial
review of a final
established]
v.
agency
aggrieved
action
person will
DEPARTMENT OF HOMELAND
not be cut off unless
persuasive
there is
SECURITY, Respondent.
reason to believe that
pur-
such was the
(alteration
pose
Congress’,”
in original)
No. 2014-3123.
Gardner,
(quoting Abbott Labs. v.
387 U.S.
Appeals,
United States Court of
87 S.Ct.
L.Ed.2d 270 the Court summarized