Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRANCH BANKING AND TRUST COMPANY
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2013-00059
`Patent 5,949,880
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`PRELIMINARY RESPONSE TO PETITION FOR COVERED BUSINESS
`METHOD PATENT REVIEW OF UNITED STATES PATENT NO.
`5,949,880 PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`
`
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`
`
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRANCH BANKING AND TRUST COMPANY
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2013-00059
`Patent 5,949,880
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`PRELIMINARY RESPONSE TO PETITION FOR COVERED BUSINESS
`METHOD PATENT REVIEW OF UNITED STATES PATENT NO.
`5,949,880 PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`
`
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. UNDER 35 U.S.C. § 325(a)(1) AND AMERICA INVENTS
`ACT § 18(a)(1), INSTITUTION OF REVIEW IS BARRED
`BY PETITIONER’S PRIOR CIVIL ACTION. ......................................... 3
`
`A.
`
`Petitioner Previously “Filed A Civil Action Challenging
`The Validity Of A Claim Of The Patent.” ........................................ 4
`
`B. Under 35 U.S.C. § 325(a)(1), A Covered Business
`Method Patent Review Is A “Post-Grant Review.” ......................... 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`The Text Of The America Invents Act
`Unambiguously Provides That, Under 35 U.S.C.
`§ 325(a), Covered Business Method Patent Reviews
`“Shall Be Regarded As, And Shall Employ The Same
`Standards And Procedures As,” Post-Grant
`Reviews. ....................................................................................... 8
`
`The Plain Meaning Of AIA § 18(a)(1) Governs. ...................... 11
`
`Legislative History Confirms The Plain Meaning. ................... 15
`
`The Office Has Acknowledged In Litigation That
`Covered Business Method Patent Review Proceeds
`As Post-Grant Review With The Exception Of The
`“Specific Circumstances” Provided In AIA
`§ 18(a)(1)(A). ............................................................................ 19
`
`The Office’s Interpretation Of Other Portions Of
`The Patent Statute Confirms That The Plain
`Meaning of AIA § 18(a)(1) and 35 U.S.C.
`§ 325(a)(1) Applies. .................................................................. 20
`
`a.
`
`The Office Has Consistently Interpreted
`Portions Of Chapter 32 Not Expressly
`Exempted In AIA § 18(a)(1)(A) To Apply To
`Covered Business Method Patent Review. ..................... 21
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`b.
`
`No Other Provision Of AIA § 18 Suggests
`That 35 U.S.C. § 325(a)(1) Should Not Apply
`To Covered Business Method Patent Reviews. .............. 24
`
`C.
`
`Petitioner Has Therefore Failed To Show That Review
`May be Initiated Under 35 U.S.C. § 325(a)(1). ............................... 27
`
`1.
`
`2.
`
`Initiation Of Review Is Barred Notwithstanding The
`Fact That Petitioner Filed Its Civil Action Before 35
`U.S.C. § 325(a)(1)’s Effective Date. ......................................... 28
`
`Office Regulations Cannot Alter Or Abolish The
`Statutory Bar. ............................................................................ 32
`
`a.
`
`b.
`
`The Regulatory And Statutory Provisions
`Address Two Different Subjects..................................... 35
`
`Even If The Regulatory And Statutory
`Provisions Were Conflicting, The Regulation
`Cannot Change The Statute. ........................................... 37
`
`III.
`
`IF INSTITUTION OF REVIEW WERE NOT BARRED
`UNDER 35 U.S.C. § 325, THE PETITION WOULD STILL
`FAIL TO SATISFY THE 35 U.S.C. § 324 THRESHOLD. ..................... 38
`
`A.
`
`The Petition Makes No Showing Of Ineligible Subject
`Matter. ................................................................................................ 40
`
`1.
`
`2.
`
`3.
`
`The Claims Do Not Merely Recite An Abstract Idea. ............... 41
`
`The “Machine-Or-Transformation” Test Is
`Satisfied. .................................................................................... 43
`
`Recent Case Law Confirms Petitioner’s Failure Of
`Proof. ......................................................................................... 44
`
`B.
`
`Petitioner’s Additional Unpatentability Arguments Are
`Insufficient Or Inapposite. ............................................................... 49
`
`IV. CONCLUSION ............................................................................................ 54
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`
`
` ii
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`EXHIBIT LIST
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`Exhibit 2001
`
`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`
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`Branch Banking and Trust Company’s Complaint (EFC
`No. 1), Branch Banking & Trust Co. v. Maxim
`Integrated Prods., Inc., No. 2:12-cv-00945 (W.D. Pa.)
`
`Memorandum Of Law In Support Of Defendant USPTO
`Director’s Motion To Dismiss, Versata Dev. Group v.
`Rea, No. 1:13-cv-00328-GBL-IDD (E.D. Va. May 16,
`2013)
`
`Elizabeth Laughton, “Can a declaratory judgment
`plaintiff file a CBM petition?,” Finnegan—America
`Invents Act (Jun. 18, 2013)
`
`Special Master’s Report And Recommendation Re:
`Claim Construction, In re Maxim Integrated Prods.,
`Inc., MDL No. 2354 (W.D. Pa. Oct. 9, 2013)
`
`Exhibit 2005
`
`Memorandum Opinion, MDL No. 2354 (W.D. Pa. Dec.
`17, 2013)
`
`Exhibit 2006
`
`Order, MDL No. 2354 (W.D. Pa. Dec. 17, 2013)
`
`Exhibit 2007
`
`Lori Gordon, “IP: The power of the covered business
`method review—The AIA provides an effective new
`tool for companies accused of infringement of financial
`patents,” Inside Counsel (Jan. 1, 2013)
`
`
`
`
`
` iii
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Pursuant to 35 U.S.C. § 323, America Invents Act of 2011 (“AIA”)
`
`§ 18(a)(1), and 37 C.F.R. §§ 42.207-208, the undersigned, on behalf of and acting
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`in a representative capacity for patent owner, Maxim Integrated Products, Inc.
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`(“Patent Owner” or “Maxim”), submits the following Preliminary Response to the
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`Petition for covered business method patent review filed in the above-captioned
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`proceeding by Petitioner Branch Banking And Trust Company (“BB&T”) against
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`United States Patent No. 5,949,880 (“the ’880 patent” or “the Patent”).
`
`I.
`
`INTRODUCTION
`
`As a matter of law, this case cannot proceed. Because Petitioners filed a
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`declaratory judgment action in federal court seeking to invalidate the Patent on
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`June 18, 2012, months before it filed its petition challenging the same Patent in the
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`case at hand, the Board is statutorily barred from instituting review by 35 U.S.C.
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`§ 325(a)(1). That provision states that a post-grant review may not be instituted if
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`a civil action challenging the validity of the patent has previously been filed. AIA
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`§ 18, in turn, makes clear that covered business method patent reviews shall be
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`regarded as, and shall be subject to the same standards and procedures as, post-
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`grant reviews.
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`Congress has clearly specified that certain statutory provisions that apply to
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`post-grant reviews do not apply to covered business method reviews: i.e.,
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`subsection (b), paragraph (e)(2), and subsection (f) of 35 U.S.C. § 325. AIA
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`§ 18(a)(1)(A). Congress has specified equally clearly that subsection (a) of section
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`325 does apply. Id. § 18(a)(1).
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`Consistent with this statutory framework, the PTO recognizes that covered
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`business method reviews proceed as post-grant reviews except for the specific
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`circumstances delineated in AIA § 18(a)(1)(A). The PTO has also promulgated
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`rules acknowledging that a covered business method patent review proceeding is a
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`form of post-grant review proceeding. These rules do not contradict the conclusion
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`that covered business method review is subject to the 35 U.S.C. § 325(a)(1)
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`statutory bar. And, in any event, the rules cannot alter the statute.
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`The legislative history underlying section 325 confirms that the application
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`of paragraph 325(a)(1)’s statutory bar to covered business method patent reviews is
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`no mere technicality. Congress recognized the evils inherent in patent owners
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`being subject to a succession of proceedings requested by the same parties
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`challenging the same patents. Accordingly, when Petitioner, without having been
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`sued by Patent Owner, and months after the AIA was signed into law, chose to
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`mount its first challenge to the Patent’s validity by filing a declaratory judgment
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`action in court, it was on full notice that it was giving up the right to later initiate a
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`second challenge to the same Patent by covered business method patent review.
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`Although the Petition includes facts showing that every element of
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`paragraph 325(a)(1) is present, Petitioner does not even mention that provision or
`
`attempt to argue how it might permit the requested review. In light of the
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`paragraph 325(a)(1) bar, Petitioner’s other standing arguments are moot.
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`Review cannot be instituted.
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`II. UNDER 35 U.S.C. § 325(a)(1) AND AMERICA INVENTS ACT
`§ 18(a)(1), INSTITUTION OF REVIEW IS BARRED BY
`PETITIONER’S PRIOR CIVIL ACTION.
`
`The Petition requests covered business method patent review of claims 1-4
`
`of the Patent. Petition at 1. However, before the Petition was filed, Petitioner filed
`
`a civil action challenging the validity of the Patent. By law, a post-grant review
`
`may not be instituted where, as here, the petitioner filed a civil action challenging
`
`the validity of a claim of the patent prior to filing the petition for review:
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`POST–GRANT REVIEW BARRED BY CIVIL ACTION. – A post-
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`grant review may not be instituted under this chapter if, before the
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`date on which the petition for such a review is filed, the petitioner or
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`real party in interest filed a civil action challenging the validity of a
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`claim of the patent.
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`35 U.S.C. § 325(a)(1). For purposes of this statutory provision, covered business
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`method patent reviews are regarded as post-grant reviews and employ the same
`
`standards and procedures. AIA § 18(a)(1). Therefore, under 35 U.SC. § 325(a)(1),
`
`institution of a covered business method patent review in this case is barred by
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`Petitioner’s previous civil action.
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`A.
`
`Petitioner Previously “Filed A Civil Action Challenging The
`Validity Of A Claim Of The Patent.”
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`On June 18, 2012, the Petitioner, Branch Banking and Trust Company, filed1
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`a declaratory complaint in District Court (the “Complaint”). Ex. 2001 (Complaint,
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`Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00945
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`
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`1 The bar in paragraph 325(a)(1) depends upon the date the action was “filed. The
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`service date of Petitioner’s Complaint is accordingly irrelevant. This case is thus
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`unlike Macauto USA v. BOS GmbH & KG, Case IPR2012-00004 (TLG), Paper
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`No. 18 (P.T.A.B. Jan. 24, 2013) (Giannetti, APJ.) at 14-15, which involved 35
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`U.S.C. § 315(b), a statutory bar that, among numerous other differences from 35
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`U.S.C. § 325(a)(1), is based on the date a complaint was “served,” not “filed.”
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`(W.D. Pa. Jun. 18, 2012)) at 2001-001. The Complaint named the Patent Owner as
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`sole defendant, and sought a “declaration[] of . . . invalidity under the patent laws
`
`of the United States . . . and the Declaratory Judgment Act . . . .” Id. ¶ 2001-001.
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`Ex. 2001 at 2001-001.
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`On September 16, 2013, over a year after filing the Complaint, Petitioner
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`filed the Petition in this case. Thus, the Complaint was filed “before the date on
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`which the petition [in this case was] filed.” § 325(a)(1).
`
`A declaratory judgment action is a “civil action.” Rule 2 of the Federal
`
`Rules of Civil Procedure states that “[t]here is one form of action—the civil
`
`action.” Rule 3 states that “[a] civil action is commenced by filing a complaint
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`with the court.” Thus, Petitioner’s filing of its Complaint constitutes the “fil[ing]
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`[of] a civil action.” § 325(a)(1).2
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`Petitioner’s civil action also, clearly, “challeng[es] the validity of a claim of
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`the [P]atent.” § 325(a)(1).3 Petitioner’s “SECOND CLAIM FOR RELIEF” in
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`2 Accord Ariosa Diags. v. Isis Innovation Ltd., Case No. IPR2012-00022 (MPT),
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`Paper 20 (P.T.A.B. Feb. 12, 2013) (Green, APJ.) at 5 (under 35 U.S.C.
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`§ 315(a)(1)’s identical language, “when the statute refers to filing a civil action, it
`
`refers to filing a complaint with the court to commence the civil action.”).
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`3 The statute expressly distinguishes “[a] counterclaim challenging the validity of
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`a claim of a patent” from “a civil action challenging the validity of a claim of a
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`patent for purposes of this subsection.” 35 U.S.C. § 325(a)(3) (emphases added).
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`Under the Federal Rules of Civil Procedure, compare, e.g., Rule 10 with Rule 13,
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`its Complaint sought a “Declaratory Judgment that the Asserted Patents are
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`Invalid,” asserting that “[t]he claims of each of the Asserted Patents are invalid for
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`failure to meet the conditions and requirements for patentability as set forth, inter
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`alia, in 35 U.S.C. § 1 et seq., including without limitation 35 U.S.C. §§ 101, 102,
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`103, and/or 112 and/or 133, improper inventorship and/or noncompliance under
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`§§ 115 and/or 116.” Id. at 7 (emphases in original). The Complaint defined
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`“Asserted Patents” as, inter alia, “U.S. Patent[] . . . No. 5,949,880 (the ‘’880
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`patent’).” Id. at 5 ¶ 19.
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`In sum, before the date on which the Petition for review was filed, Petitioner
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`filed a civil action challenging the validity of a claim of the Patent.4
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`the Complaint states claims, not counterclaims. Thus, paragraph 325(a)(3) further
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`confirms that Petitioner’s request for a declaration that the claims of the Patent are
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`invalid is a civil action challenging the validity of a claim of the Patent.
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`4 Notably, the Petition itself shows that the elements of 35 U.S.C. § 325(a)(1) are
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`met. Petitioner argues that it has standing because Patent Owner “asserts the ’880
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`Patent in counterclaims against Petitioner” in litigation formed by “transferr[ing]”
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`numerous “[r]elated [m]atters” to a single court. Pet. at 2, 7-8. The transferred
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`matters listed include the action arising from the Complaint, Branch Banking &
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`B. Under 35 U.S.C. § 325(a)(1), A Covered Business Method Patent
`Review Is A “Post-Grant Review.”
`
`The AIA creates and defines covered business method patent review as a
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`transitional form of post-grant review to which 35 U.S.C. § 325(a) applies.
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`1.
`
`The Text Of The America Invents Act Unambiguously Provides
`That, Under 35 U.S.C. § 325(a), Covered Business Method
`Patent Reviews “Shall Be Regarded As, And Shall Employ The
`Same Standards And Procedures As,” Post-Grant Reviews.
`
`As discussed above, 35 U.S.C. § 325(a)(1) expressly prohibits institution of
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`a “post-grant review” based on a petition by a party that previously filed a civil
`
`action challenging the validity of the same patent. As discussed below, AIA
`
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`Trust Co. v. Maxim Integrated Products, Inc., No. 2:12-cv-01538-JFC)—on its
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`face, a civil action previously filed by Petitioner against Patent Owner. Id. at 8.
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`Thus the Petition shows that (i) before the petition for review was filed, Petitioner
`
`filed a civil action against Patent Owner; (ii) that action is “related” to this case;
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`and (iii) that action is part of a litigation in which Patent Owner filed counterclaims
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`against Petitioner for infringement of the Patent. Those facts support the (correct)
`
`inference that the action challenged the validity of a claim of the Patent. Thus, the
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`Petition shows that all elements of 35 U.S.C. § 325(a)(1) are met—yet offers no
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`arguments that 35 U.S.C. § 325(a)(1) does not apply.
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`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
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`§ 18(a)(1): (i) expressly defines covered business method patent reviews as “post-
`
`grant review” proceedings; (ii) expressly dictates that the “standards and
`
`procedures” of post-grant reviews shall apply to covered business method patent
`
`reviews and that the covered business method reviews “shall be regarded as” post-
`
`grant reviews, subject to certain specific exceptions; and (iii) makes clear that
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`subsection 325(a) of Chapter 32, 35 U.S.C. § 325(a), the operative statutory
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`provision for present purposes, shall apply to covered business method patent
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`review proceedings.
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`“In construing a federal statute it is appropriate to assume that the ordinary
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`meaning of the language that Congress employed accurately expresses the
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`legislative purpose.” Mills Music, Inc. v. Snyder, 469 U.S. 153, 164 (1985); see
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`also Bd. of Govs. of Fed. Reserve Sys. v. Dimension Fin. Corp., 474 U.S. 361, 368
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`(1986) (“no amount of agency expertise – however sound may be the result – can
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`make the words” of a statute take on a meaning that the language cannot support).
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`Here, the statute’s plain language directs that “the Director shall issue regulations
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`establishing and implementing a transitional post-grant review proceeding for
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`review of the validity of covered business method patents.” AIA § 18(a)(1)
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`(emphases added). Thus, the AIA makes explicit that covered business method
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`patent reviews are a type of “post-grant review” proceeding.
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`Case CBM2013-00059
`Patent 5,949,880
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`The AIA further specifies that this
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`transitional post-grant review proceeding for review of the validity of
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`covered business method patents . . . shall be regarded as, and shall
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`employ the standards and procedures of, a post-grant review under
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`chapter 32 of title 35, United States Code, subject to the following:
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`(A) Section 321(c) of title 35, United States Code, and
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`subsections (b), (e)(2), and (f) of section 325 of such title shall
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`not apply to a transitional proceeding. . . .
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`AIA § 18(a)(1)(A). “Chapter 32 of Title 35, United States Code,” includes
`
`“section 325 of such title.” In other words, the AIA expressly specifies that
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`covered business method patent reviews “shall be regarded as, and shall employ
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`the standards and procedures of, a post-grant review under” section 325 “subject to
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`the following” exception: “subsections (b), (e)(2), and (f) of section 325 of such
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`title shall not apply.” Id. Importantly, subsection (a) of section 325 is not one of
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`the exceptions.
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`Under familiar canons of statutory interpretation, including that of
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`“expressio unius est exclusion alterius,”5 when the AIA expressly excludes
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`
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`5 “Expressio unius est exclusio alterius means that the expression of one thing is
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`the exclusion of another.” Cook v. Principi, 318 F.3d 1334, 1339 n.6 (Fed. Cir.
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`Case CBM2013-00059
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`“subsections (b), (e)(2), and (f)” of section 325 from the provisions that apply to
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`covered business method patent reviews, it necessarily includes subsection (a) of
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`section 325 in the provisions of section 325 that do apply to covered business
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`method patent reviews.
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`Thus, the plain meaning of the AIA provides that covered business method
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`patent reviews shall be regarded as, and shall employ the standards and procedures
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`of, post-grant reviews under subsection 325(a), including paragraph 325(a)(1).
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`2.
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`The Plain Meaning Of AIA § 18(a)(1) Governs.
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`These statutory interpretation principles are routinely applied to statutes that,
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`like paragraph 18(a)(1), set out a general rule and express exceptions to that rule.
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`For example, in TRW Inc. v. Andrews, the Supreme Court analyzed a statute
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`that, like the statute in this case, “set[] out a general rule and an exception.” 534
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`U.S. 19, 22 (2001). The court of appeals had held that the statute’s general rule in
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`TRW had an additional, unstated exception that was a “prevailing . . . rule” in those
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`2002). This canon “instructs that where law expressly describes a particular
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`situation to which it shall apply, an irrefutable inference must be drawn that what
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`was omitted or excluded was intended to be omitted or excluded.” In re Lueders,
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`111 F.3d 1569, 1577 n.12 (Fed. Cir. 1997).
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`types of legal provisions. Id. at 26-27. The Supreme Court reversed. The Court
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`explained that “[w]here Congress explicitly enumerates certain exceptions to a
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`general prohibition, additional exceptions are not to be implied, in the absence of
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`evidence of a contrary legislative intent,” and that an “explicit listing of
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`exceptions” to a general provision is “considered indicative of Congress’ intent to
`
`preclude courts from reading other unmentioned, open-ended, ‘equitable’
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`exceptions into the statute.” Id. at 28-29 (citations and internal quotation marks
`
`omitted). Citing the canon of “[e]xpressio unius est exclusion alterius,” the TRW
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`Court concluded that “[t]he most natural reading” of the statute was “that Congress
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`implicitly excluded” a broader exception “by explicitly including a more limited
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`one.” Id. (italics in original).
`
`These principles are routinely applied to agency interpretations of federal
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`statutes that list express exceptions to general rules. In Andrus v. Glover
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`Construction Co., the Supreme Court addressed a statutory provision setting forth a
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`general rule in subsection (c) that “all purchases and contracts for property and
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`services shall be made by advertising” for public bids. 446 U.S. 608, 616 (1980)
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`(alteration marks omitted). A subsection directed particularly to road construction
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`contracts provided that the rule in subsection (c) “shall not be construed to permit
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`any contract for the construction or repair or roads to be negotiated without [public
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`bids, unless negotiation of such contract is authorized by the provisions of
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`paragraphs (1), (2), (3), (10), (11), (12), or (14) of subsection (c).” Id. (alteration
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`marks omitted, emphasis added). The Bureau of Indian Affairs determined that it
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`was empowered to negotiate a road contract without public bids under paragraph
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`(15) of subsection (c)—which allowed agencies to eschew public bidding if
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`“otherwise authorized by law”—in order to further the policy goals of another law
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`encouraging hiring of Native American contractors. Id. The district court ruled
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`that this procedure violated the statute, and a unanimous Supreme Court affirmed.
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`The Supreme Court pointed to the statute’s express exceptions from subsection
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`(c)’s general rule, and explained that this meticulous, finite listing of exceptions
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`precluded the Bureau from reading yet another one into the law:
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`Not contained in this list of exceptions is subsection (c)(15). From
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`this omission only one inference can be drawn: Congress meant to bar
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`the negotiation of road construction and repair projects under the
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`authority of laws like the Buy Indian Act. Where Congress explicitly
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`enumerates certain exceptions to a general prohibition, additional
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`exceptions are not to be implied, in the absence of evidence of a
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`contrary legislative intent.
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`Id. at 616-17 (emphasis added). And “[n]othing in the legislative history . . .
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`point[ed] in a different direction than d[id] the plain language of the statute.” Id.
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`at 617 n.18.
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`The Federal Circuit follows the same rule. In Cook v. Principi, the Federal
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`Circuit analyzed a statutory provision providing that decisions of the Veterans
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`Administration were final subject to two express exceptions. 318 F.3d 1334, 1336-
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`37 (Fed. Cir. 2002). The Federal Circuit held that those two express exceptions to
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`the statutory provision precluded judicial addition of further exceptions:
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`Congress knew how to create exceptions to the finality of VA
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`decisions, and it explicitly did so in two circumstances. It enacted the
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`statutes codifying CUE challenges (sections 5109A and 7111) and the
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`statute allowing claims based on new and material evidence (section
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`5108). Applying the familiar canon of expressio unius est exclusio
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`alterius, we conclude that Congress did not intend to allow exceptions
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`to the rule of finality in addition to the two that it expressly created.
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`Id. at 1339 (underlining in original). The Fourth Circuit, to which the AIA
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`directs actions filed directly against the Office, follows this rule as well. See
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`Milam v. Director, Office of Worker’s Comp. Progs., 874 F.2d 223, 225-26 (4th
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`Cir. 1989) (describing Andrus rule as “a basic presumption in statutory
`
`interpretation,” affirming agency’s refusal to find implied exception in statute
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`beyond its express exceptions). See also, e.g., NRDC v. EPA, 489 F.3d 1250,
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`1259-1260 (D.C. Cir. 2007) (“[W]hen the Congress wanted to exempt a particular
`
`kind of [unit] from section 129’s coverage . . . it knew how to accomplish this
`
`through an express statutory exception and in fact did so for four specific classes
`
`of . . . units. Had the Congress intended to exempt [additional] units . . . , it could
`
`likewise have expressly provided for their exemption in the statute. But the
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`Congress did not—and [the] EPA may not, consistent with Chevron, create an
`
`additional exception on its own.”) (citations omitted); United States v. Councilman,
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`418 F.3d 67, 75 (1st Cir. 2005) (applying “expressio unius est exclusion alterius”
`
`canon and TRW to hold that “Congress knew how to, and in fact did, explicitly
`
`exclude four specific categories of communications from the broad definition” in
`
`the statute, “[y]et Congress never added the exclusion urged by [defendant]”).
`
`3.
`
`Legislative History Confirms The Plain Meaning.
`
`Statutory construction “begins with the language of the statute[,] [a]nd
`
`where the statutory language provides a clear answer, it ends there as well.”
`
`Hughes Aircraft Co. v. Jacobson, 525 U.S. 432, 438 (1999) (citations and internal
`
`quotation marks omitted). However, even if one assumed, counterfactually, that
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`the statutory language were not already clear, the legislative history of the AIA
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`would confirm that Congress meant what it said when it omitted subsection 325(a)
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`of Chapter 32 of Title 35 from the exceptions to paragraph 18(a)(1) of the AIA.
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`Just as in the Andrus case above, “[n]othing in the legislative history of the [AIA]
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`points in a different direction than does the plain language of the statute” in
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`paragraph 325(a)(1). Andrus, 446 U.S. at 618 n.18.
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`On the contrary, in discussing the bill that would shortly thereafter be signed
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`into law as the AIA, Senator Kyl stated that the law was intended to “bar seeking
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`IPR or PGR after a declaratory-judgment action has been filed”:
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`The Senate bill, at proposed sections 315(a) and 325(a), would have
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`barred a party or his real party in interest from seeking or maintaining
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`an inter partes or post[-]grant review after he has filed a declaratory-
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`judgment action challenging the validity of the patent. The final bill
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`will still bar seeking IPR or PGR after a declaratory-judgment
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`action has been filed, but will allow a declaratory-judgment action to
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`be filed on the same day or after the petition for IPR or PGR was
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`filed.
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`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (emphasis added) (quoted in
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`Ariosa, Case IPR2012-00022 (MPT), Paper 20, at 7).
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`Not only is the AIA’s legislative history bereft of any indication that the
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`transitional form of “post-grant review” permitted for covered business method
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`patents was intended to be excluded from this post-declaratory judgment bar, it
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`indicates instead that, except for AIA § 18’s express list of differences between the
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`two, the covered business method patent review was “modeled after post-grant
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`review as set forth in . . . Chapter 32,” and would “generally function[] on the same
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`terms”:
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`In utilizing the post-grant review process, petitioners, real parties in
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`interest, and their privies are precluded from improperly mounting
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`multiple challenges to a patent or initiating challenges after filing a
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`civil action challenging the validity [of] a claim in the patent. . . .
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`. . .
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`A petition to initiate a [covered business method patent] review will
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`not be granted unless the petitioner is first sued for infringement or is
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`accused of infringement. The program otherwise generally functions
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`on the same terms as other post-grant proceedings initiated
`
`pursuant to the bill. . . .
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`. . .
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`Section 18 creates a transitional program to allow post-grant review
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`of the validity of business method patents. Under subsection (a), the
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`Director is authorized to establish regulations governing the use of the
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`new proceeding, which will be modeled after post-grant review as set
`
`forth in Section 6 (new Chapter 32 of the Patent Act).
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`H.R. 112-98 (June 1, 2011), at pages 48, 54, 80 (emphases added).
`
`Still more specifically, the legislative history shows that covered business
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`method patent reviews were intended to be implemented in a way that avoided
`
`attempts to use them for harassment of patent owners. During debates on the bill
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`that would become the AIA, concerns were raised that the new covered business
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`method patent review procedure would be used to “harass” patent owners and
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`should be “implement[ed] . . . as narrowly as possible.” 157 Cong. Rec. S5428
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`(daily ed. Sept. 8, 2011) (statement of Sen. Pryor). In a response directly
`
`responding to these concerns, Senator Leahy explained that the new covered
`
`business method patent review was “modeled on . . . post-grant review” under
`
`chapter 32, and would be “implement[ed] . . . in a manner that avoids attempts to
`
`use the transitional program against patent owners in a harassing way”:
`
`The proceeding created by section 18 is modeled on the proposed
`
`post-grant review proceeding under Section 6 of the act. . . . While the
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`program will generally otherwise function on the same terms as other
`
`post-grant proceedings, the USPTO should implement Section 18 in a
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`manner that avoids attempts to use the transitional program against
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`patent owners in a harassing way.
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`Id. (statement of Sen. Leahy).
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`Thus, the legislative history of the AIA confirms that paragraph 325(a)(1)’s
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`bar on the initiation of post-grant review when the petitioner has previously
`
`challenged the same patent in a civil action should equally bar initiation of covered
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`business method patent reviews in such situations. “If the statutory exemptions are
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`to be broadened, it is for Congress, not [the Office], to do so.” Fireman’s Fund
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`Ins. Co. v. England, 313 F.3d 1344, 1350 (Fed. Cir. 2002).
`
`4.
`
`The Office Has
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