United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC,
`Appellant
`______________________
`
`2014-1301
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2012-
`00001.
`
`______________________
`
`Decided: July 8, 2015
`______________________
`
`TIMOTHY M. SALMON, Basking Ridge, NJ, argued for
`appellant. Also represented by JOHN ROBERT KASHA,
`Kasha Law LLC, North Potomac, MD.
`
`NATHAN K. KELLEY, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA,
`argued for intervenor Michelle K. Lee. Also represented
`by SCOTT WEIDENFELLER, ROBERT J. MCMANUS.
`_____________________
`
`Before NEWMAN, CLEVENGER, and DYK, Circuit Judges.
`Opinion for the court filed by Circuit Judge DYK.
`Dissenting opinion filed by Circuit Judge NEWMAN.
`
`Ocean Tomo Ex. 1014-001
`
`

`
`
`
` 2
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`DYK, Circuit Judge.
`Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Pa-
`tent No. 6,778,074 (the “’074 patent”). Garmin Interna-
`tional, Inc. and Garmin USA, Inc. (collectively, “Garmin”)
`petitioned the United States Patent and Trademark
`Office (“PTO”) for inter partes review (“IPR”) of claims 10,
`14, and 17 of the ’074 patent. The PTO granted Garmin’s
`petition and instituted IPR. The Patent Trial and Appeal
`Board (the “Board”) timely issued a final decision finding
`claims 10, 14, and 17 obvious. The Board additionally
`denied Cuozzo’s motion to amend the ’074 patent by
`substituting new claims 21, 22, and 23 for claims 10, 14,
`and 17.
`Contrary to Cuozzo’s contention, we hold that we lack
`jurisdiction to review the PTO’s decision to institute IPR.
`We affirm the Board’s final determination, finding no
`error in the Board’s claim construction under the broadest
`reasonable interpretation standard, the Board’s obvious-
`ness determination, and the Board’s denial of Cuozzo’s
`motion to amend.
`
`BACKGROUND
`Cuozzo is the assignee of the ’074 patent, entitled
`“Speed Limit Indicator and Method for Displaying Speed
`and the Relevant Speed Limit,” which issued on August
`17, 2004. The ’074 patent discloses an interface which
`displays a vehicle’s current speed as well as the speed
`limit. In one embodiment, a red filter is superimposed on
`a white speedometer so that “speeds above the legal speed
`limit are displayed in red . . . while the legal speeds are
`displayed in white . . . .” Id. col. 5 ll. 35–37. A global
`positioning system (“GPS”) unit tracks the vehicle’s
`location and identifies the speed limit at that location.
`The red filter automatically rotates when the speed limit
`changes, so that the speeds above the speed limit at that
`location are displayed in red. The patent also states that
`the speed limit indicator may take the form of a colored
`
`Ocean Tomo Ex. 1014-002
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`3
`
`liquid crystal display (“LCD”). Id. col. 3 ll. 4–6, col. 6 ll.
`11–14. In claim 10, the independent claim at issue here, a
`colored display shows the current speed limit, and the
`colored display is “integrally attached” to the speedome-
`ter. Id. col. 7 l. 10.
`Claim 10 recites:
`A speed limit indicator comprising:
`a global positioning system receiver;
`a display controller connected to said global posi-
`tioning system receiver, wherein said display
`controller adjusts a colored display in re-
`sponse to signals from said global positioning
`system receiver to continuously update the de-
`lineation of which speed readings are in viola-
`tion of the speed limit at a vehicle’s present
`location; and
`a speedometer integrally attached to said colored
`display.
`Id. col. 7 ll. 1–10. Claim 14 is addressed to “[t]he speed
`limit indicator as defined in claim 10, wherein said col-
`ored display is a colored filter.” Id. col. 7 ll. 23–24. Claim
`17 recites: “[t]he speed limit indicator as defined in claim
`14, wherein said display controller rotates said colored
`filter independently of said speedometer to continuously
`update the delineation of which speed readings are in
`violation of the speed limit at a vehicle's present location.”
`Id. col. 8 ll. 5–9.
`On September 16, 2012, Garmin filed a petition with
`the PTO to institute IPR of, inter alia, claims 10, 14, and
`17 the ’074 patent. Garmin contended that claim 10 was
`invalid as anticipated under 35 U.S.C. § 102(e) or as
`obvious under 35 U.S.C. § 103(a) and that claims 14 and
`17 were obvious under § 103(a). The PTO instituted IPR,
`determining that there was a reasonable likelihood that
`claims 10, 14, and 17 were obvious under § 103 over (1)
`U.S. Patent Nos. 6,633,811 (“Aumayer”), 3,980,041 (“Ev-
`
`Ocean Tomo Ex. 1014-003
`
`

`
`
`
` 4
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`ans”), and 2,711,153 (“Wendt”); and/or (2) German Patent
`No. 197 55 470 (“Tegethoff”), U.S. Patent No. 6,515,596
`(“Awada”), Evans, and Wendt. Although Garmin’s petition
`with respect to claim 17 included the grounds on which
`the PTO instituted review, the petition did not list Evans
`or Wendt for claim 10 or Wendt for claim 14.
`In its subsequent final decision, the Board explained
`that “[a]n appropriate construction of the term ‘integrally
`attached’ in independent claim 10 is central to the pa-
`tentability analysis of claims 10, 14, and 17.” J.A. 7. The
`Board applied a broadest reasonable
`interpretation
`standard and construed the term “integrally attached” as
`meaning “discrete parts physically joined together as a
`unit without each part losing its own separate identity.”
`J.A. 9. The Board found that claims 10, 14, and 17 were
`unpatentable as obvious under 35 U.S.C. § 103 (1) over
`Aumayer, Evans, and Wendt; and, alternatively, (2) over
`Tegethoff, Awada, Evans, and Wendt.
`The Board also denied Cuozzo’s motion to amend the
`patent by replacing claims 10, 14, and 17 with substitute
`claims 21, 22, and 23. The Board’s denial of the motion to
`amend centered on proposed claim 21.1 Claim 21 would
`have amended the patent to claim “a speedometer inte-
`grally attached to [a] colored display, wherein the speed-
`ometer comprises a liquid crystal display, and wherein
`the colored display is the liquid crystal display.” J.A. 357–
`58. The Board rejected the amendment because (1) substi-
`tute claim 21 lacked written description support as re-
`quired by 35 U.S.C. § 112, and (2) the substitute claims
`
`
`1 The parties do not separately address claims 22
`and 23 and apparently agree that the motion for leave to
`amend on those claims presents the same issues as claim
`21.
`
`Ocean Tomo Ex. 1014-004
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`5
`
`would improperly enlarge the scope of the claims as
`construed by the Board.
`Cuozzo appealed. The PTO intervened, and we grant-
`ed Garmin’s motion to withdraw as appellee.2 We have
`jurisdiction to review the Board’s final decision under 28
`U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`I
`IPRs proceed in two phases. St. Jude Med., Cardiolo-
`gy Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375–76
`(Fed. Cir. 2014). In the first phase, the PTO determines
`whether to institute IPR. In the second phase, the Board
`conducts the IPR proceeding and issues a final decision.
`Id.
`Cuozzo argues that the PTO improperly instituted
`IPR on claims 10 and 14 because the PTO relied on prior
`art that Garmin did not identify in its petition as grounds
`for IPR as to those two claims (though the prior art in
`question was identified with respect to claim 17). Under
`the statute, any petition for IPR must “identif[y] . . . with
`particularity . . . the grounds on which the challenge to
`each claim is based . . . .” 35 U.S.C. § 312(a)(3). Cuozzo
`argues that the PTO may only institute IPR based on
`grounds identified in the petition because “[t]he Director
`may not authorize an inter partes review to be instituted
`unless the Director determines that the information
`presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner
`would prevail . . . .” Id. § 314(a).
`
`
`2 Garmin filed a motion to withdraw because it
`agreed not to participate in any appeal of the IPR written
`decision as part of a settlement agreement with Cuozzo.
`
`Ocean Tomo Ex. 1014-005
`
`

`
`
`
` 6
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`Section 314(d) is entitled “No appeal” and provides
`that “[t]he determination by the Director whether to
`institute an inter partes review under this section shall be
`final and nonappealable.” 35 U.S.C. § 314(d). The PTO
`argues that § 314(d) precludes review of a determination
`to institute IPR. Cuozzo argues that § 314(d) does not
`completely preclude review of the decision to institute
`IPR, but instead merely postpones review of the PTO’s
`authority until after the issuance of a final decision by the
`Board.
`We have previously addressed § 314(d) and have held
`that it precludes interlocutory review of decisions whether
`to institute IPR. In St. Jude, we characterized § 314(d) as
`a “broadly worded bar on appeal” and held that § 314(d)
`“certainly bars” interlocutory review of the PTO’s denial
`of a petition for IPR. 749 F.3d at 1375–76. This result was
`supported by § 319, which “authorizes appeals to this
`court only from
`‘the final written decision of the
`[Board] . . . .’” Id. at 1375 (quoting 35 U.S.C. § 319) (alter-
`ation in original). Similarly, the bar to interlocutory
`review is supported by 35 U.S.C. § 141(c), which “author-
`izes appeal only by ‘a party to an inter partes re-
`view . . . who is dissatisfied with the final written decision
`of the [Board] under section 318(a).’” Id. (quoting 35
`U.S.C. § 141(c)) (alterations in original). But while we
`stated that § 314 “may well preclude all review by any
`route,” we did not decide the issue. Id. at 1376.
`We conclude that § 314(d) prohibits review of the de-
`cision to institute IPR even after a final decision. On its
`face, the provision is not directed to precluding review
`only before a final decision. It is written to exclude all
`review of the decision whether to institute review. Section
`314(d) provides that the decision is both “nonappealable”
`and “final,” i.e., not subject to further review. 35 U.S.C.
`§ 314(d). A declaration that the decision to institute is
`“final” cannot reasonably be interpreted as postponing
`review until after issuance of a final decision on patenta-
`
`Ocean Tomo Ex. 1014-006
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`7
`
`bility. Moreover, given that § 319 and § 141(c) already
`limit appeals to appeals from final decisions, § 314(d)
`would have been unnecessary to preclude non-final review
`of institution decisions. Because § 314(d) is unnecessary
`to limit interlocutory appeals, it must be read to bar
`review of all institution decisions, even after the Board
`issues a final decision. Nor does the IPR statute expressly
`limit the Board’s authority at the final decision stage to
`the grounds alleged in the IPR petition. It simply author-
`izes the Board to issue “a final written decision with
`respect to the patentability of any patent claim challenged
`by the petitioner and any new claim added under section
`316(d).” 35 U.S.C. § 318(a).
`Our decision in In re Hiniker Co., 150 F.3d 1362, 1367
`(Fed. Cir. 1998), confirms the correctness of the PTO’s
`position here. There, even absent a provision comparable
`to § 314(d),3 we held that a flawed decision to institute
`reexamination under 35 U.S.C. § 303 was not a basis for
`setting aside a final decision. Hiniker, 150 F.3d at 1367.
`Under the statute at issue in Hiniker, reexamination
`could only be instituted if the Commissioner determined
`that there was “a substantial new question of patentabil-
`ity,” i.e., new prior art not considered by the examiner. 35
`U.S.C. § 303(a) (1994). In Hiniker, the PTO instituted
`reexamination based on prior art considered in the origi-
`nal examination (Howard). Hiniker, 150 F.3d at 1365. But
`the PTO’s final decision relied on East (which had not
`been before the examiner in the initial examination) in
`finding the claims invalid. Id. at 1366. We held that our
`
`
`3 Unlike § 314, the reexamination statute only pro-
`vides that “[a] determination by the Commission-
`er . . . that no substantial new question of patentability
`has been raised will be final and nonappealable.” 35
`U.S.C. § 303(c) (1994) (emphasis added).
`
`Ocean Tomo Ex. 1014-007
`
`

`
`
`
` 8
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`jurisdiction was only “over Hiniker’s appeal from the
`[final] decision of the Board.” Id. at 1367. While the final
`decision would have been subject to reversal if it had
`improperly relied only on prior art presented to the exam-
`iner,4 any error in instituting reexamination based on the
`Howard reference was “washed clean during the reexami-
`nation proceeding,” which relied on new art. Id. The fact
`that the petition was defective is irrelevant because a
`proper petition could have been drafted. The same is even
`clearer here, where § 314(d) explicitly provides that there
`is no appeal available of a decision to institute. There was
`no bar here to finding claims 10 and 14 unpatentable
`based on the Evans and/or Wendt references. The failure
`to cite those references in the petition provides no ground
`for setting aside the final decision.
`Cuozzo argues that Congress would not have intended
`to allow the PTO to institute IPR in direct contravention
`of the statute, for example, on grounds of prior public use
`where the IPR statute permits petitions only on the basis
`of “prior art consisting of patents or printed publications.”
`35 U.S.C. § 311. The answer is that mandamus may be
`available to challenge the PTO’s decision to grant a peti-
`tion to institute IPR after the Board’s final decision in
`situations where the PTO has clearly and indisputably
`exceeded its authority.
`The PTO argues that our previous decisions preclude
`mandamus. In In re Dominion Dealer Solutions, LLC, 749
`F.3d 1379, 1381 (Fed. Cir. 2014), we held that mandamus
`
`4 See In re Portola Packaging, Inc., 110 F.3d 786,
`789, superseded by statute as recognized by In re NTP,
`Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011); In re Recreative
`Techs. Corp., 83 F.3d 1394 (Fed. Cir. 1996). Congress
`subsequently amended the statute to provide for consid-
`eration of prior art before the examiner. 35 U.S.C. § 303.
`
`Ocean Tomo Ex. 1014-008
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`9
`
`relief was not available to challenge the denial of a peti-
`tion for IPR. Given the statutory scheme, there was no
`“‘clear and indisputable right’ to challenge a non-
`institution decision directly in this court,” as required for
`mandamus. Id. And in In re Procter & Gamble Co., 749
`F.3d 1376, 1378–79 (Fed. Cir. 2014), we held that man-
`damus was not available to provide immediate review of a
`decision to institute IPR. There was no “clear and indis-
`putable right to this court’s immediate review of a deci-
`sion to institute an inter partes review, as would be
`needed for mandamus relief.” Id. at 1379. Furthermore,
`that “[wa]s not one of the rare situations in which irreme-
`diable interim harm c[ould] justify mandamus, which is
`unavailable simply to relieve [the patentee] of the burden
`of going through the inter partes review.” Id. (citation
`omitted). However, we did not decide the question of
`whether the decision to institute review is reviewable by
`mandamus after the Board issues a final decision or
`whether such review is precluded by § 314(d). Id. Nor do
`we do so now.
`Even if § 314 does not bar mandamus after a final de-
`cision, at least “three conditions must be satisfied before
`[a writ of mandamus] may issue.” Cheney v. U.S. Dist.
`Court for the D.C., 542 U.S. 367, 380 (2004). “First, ‘the
`party seeking issuance of the writ [must] have no other
`adequate means to attain the relief he desires.’” Id. (quot-
`ing Kerr v. U.S. Dist. Court for the N. Dist. of Cal., 426
`U.S. 394, 403 (1976) (alteration in original)). That condi-
`tion appears to be satisfied since review by appeal is
`unavailable. “Second, the petitioner must satisfy ‘the
`burden of showing that his right to issuance of the writ is
`clear and indisputable.’” Id. at 381 (internal quotations,
`citation, and alterations omitted). “Third, the issuing
`court, in the exercise of its discretion, must be satisfied
`that the writ is appropriate under the circumstances.” Id.
`(citation omitted).
`
`Ocean Tomo Ex. 1014-009
`
`

`
`
`
` 10
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`Here, Cuozzo has not filed a mandamus petition, but
`even if we were to treat its appeal as a request for man-
`damus,5 the situation here is far from satisfying the clear-
`and-indisputable requirement for mandamus. It is not
`clear that IPR is strictly limited to the grounds asserted
`in the petition. The PTO urges that instituting IPR of
`claims 10 and 14 based on the grounds for claim 17 was
`proper because claim 17 depends from claim 14, which
`depends from claim 10. Any grounds which would invali-
`date claim 17 would by necessary implication also invali-
`date claims 10 and 14. See Callaway Golf Co. v. Acushnet
`Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader
`independent claim cannot be nonobvious where a depend-
`ent claim stemming from that independent claim is
`invalid for obviousness.”). The PTO argues that Garmin
`implicitly asserted that claims 10 and 14 were unpatenta-
`ble when it asserted that claim 17 was unpatentable.
`Whether or not the PTO is correct in these aspects, it is at
`least beyond dispute there is no clear and indisputable
`right that precludes institution of the IPR proceeding. We
`need not decide whether mandamus to review institution
`of IPR after a final decision is available in other circum-
`stances.
`
`II
`Cuozzo contends in addition that the Board erred in
`finding the claims obvious, arguing initially that the
`
`
`5 See 16 Charles A. Wright, Arthur R. Miller & Ed-
`ward H. Cooper, Federal Practice and Procedure § 3932.1
`(3d ed. 2012) (“Many cases illustrate the seemingly con-
`verse proposition that . . . an appeal can substitute for a
`writ in the sense that an attempted appeal from an order
`that is nonappealable can be treated as a petition for a
`writ.” (citations omitted)).
`
`Ocean Tomo Ex. 1014-010
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`11
`
`Board should not have applied the broadest reasonable
`interpretation standard in claim construction.
`A
`The America Invents Act (“AIA”) created IPR, but the
`statute on its face does not resolve the issue of whether
`the broadest reasonable interpretation standard is appro-
`priate in IPRs; it is silent on that issue. However, the
`statute conveys rulemaking authority to the PTO. It
`provides that “[t]he Director shall prescribe regulations,”
`inter alia, “setting forth the standards for the showing of
`sufficient grounds to institute . . . review,” and “establish-
`ing and governing inter partes review . . . and the rela-
`tionship of such review to other proceedings . . . .” 35
`U.S.C. § 316(a)(2), (a)(4). Pursuant to this authority, the
`PTO has promulgated 37 C.F.R. § 42.100(b), which pro-
`vides that “[a] claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specifi-
`cation of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b). Cuozzo argues that the PTO lacked authority
`to promulgate § 42.100(b) and that the broadest reasona-
`ble interpretation standard is inappropriate in an adjudi-
`catory IPR proceeding. The PTO argues that 35 U.S.C.
`§ 316 provides the necessary authority to the PTO to
`promulgate § 42.100(b) and that the broadest reasonable
`interpretation is appropriately applied in the IPR context.
`1
`Before addressing the scope of the PTO’s rulemaking
`authority, we consider the history of the broadest reason-
`able interpretation standard and the bearing of that
`history on the interpretation of the IPR statute. No sec-
`tion of the patent statute explicitly provides that the
`broadest reasonable interpretation standard shall or shall
`not be used in any PTO proceedings.
`Nonetheless, the broadest reasonable interpretation
`standard has been applied by the PTO and its predecessor
`
`Ocean Tomo Ex. 1014-011
`
`

`
`
`
` 12
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`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`for more than 100 years in various types of PTO proceed-
`ings. A 1906 PTO decision explained, “[n]o better method
`of construing claims is perceived than to give them in
`each case the broadest interpretation which they will
`support without straining the language in which they are
`couched.” Podlesak v. McInnerney, 1906 Dec. Comm’r Pat.
`265, 258. For more than a century, courts have approved
`that standard. See, e.g., Miel v. Young, 29 App. D.C. 481,
`484 (D.C. Cir. 1907) (“This claim should be given the
`broadest interpretation which it will support . . . .”); In re
`Rambus, Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014)
`(“Claims are generally given their ‘broadest reasonable
`interpretation’ consistent with the specification during
`reexamination.” (citation omitted)); In re Am. Acad. of Sci.
`Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“Giving
`claims their broadest reasonable construction ‘serves the
`public interest by reducing the possibility that claims,
`finally allowed, will be given broader scope than is justi-
`fied.’” (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed.
`Cir. 1984))); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997) (“[W]e reject appellants’ invitation to construe
`either of the cases cited by appellants so as to overrule,
`sub silentio, decades old case law. . . . It would be incon-
`sistent with the role assigned to the PTO in issuing a
`patent to require it to interpret claims in the same man-
`ner as judges who, post-issuance, operate under the
`assumption the patent is valid. The process of patent
`prosecution is an interactive one.”); In re Carr, 297 F. 542,
`544 (D.C. Cir. 1924) (“For this reason we have uniformly
`ruled that claims will be given the broadest interpretation
`of which they reasonably are susceptible. This rule is a
`reasonable one, and tends not only to protect the real
`invention, but to prevent needless litigation after the
`patent has issued.”); In re Kebrich, 201 F.2d 951, 954
`(CCPA 1953) (“[I]t is . . . well settled that . . . the tribunals
`[of the PTO] and the reviewing courts in the initial con-
`sideration of patentability will give claims the broadest
`interpretation which, within reason, may be applied.”).
`
`Ocean Tomo Ex. 1014-012
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`13
`
`This court has approved of the broadest reasonable in-
`terpretation standard in a variety of proceedings, includ-
`ing initial examinations, interferences, and post-grant
`proceedings such as reissues and reexaminations. Indeed,
`that standard has been applied in every PTO proceeding
`involving unexpired patents.6 In doing so, we have cited
`the long history of the PTO’s giving claims their broadest
`reasonable construction. See, e.g., Yamamoto, 740 F.2d at
`1571–72 (reexaminations); In re Reuter, 670 F.2d 1015,
`1019 (CCPA 1981) (reissues); In re Prater, 415 F.2d 1393,
`1404–05 (1969) (examinations); cf. Reese v. Hurst, 661
`F.2d 1222, 1236 (CCPA 1981) (interferences). Applying
`the broadest reasonable interpretation standard “re-
`duce[s] the possibility that, after the patent is granted,
`the claims may be interpreted as giving broader coverage
`than is justified.” Reuter, 670 F.2d at 1015 (quoting Prat-
`er, 415 F.2d at 1404–05).
`There is no indication that the AIA was designed to
`change the claim construction standard that the PTO has
`applied for more than 100 years. Congress is presumed to
`legislate against the background of the kind of longstand-
`ing, consistent existing law that is present here. Astoria
`Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 110
`(1991); Procter & Gamble Co. v. Kraft Foods Global, 549
`F.3d 842, 848–49 (Fed. Cir. 2008) (improper to presume
`
`
`6 The claims of an expired patent are the one excep-
`tion where the broadest reasonable interpretation is not
`used because the patentee is unable to amend the claims.
`Rambus, 753 F.3d at 1256 (“If, as is the case here, a
`reexamination involves claims of an expired patent, a
`patentee is unable to make claim amendments and the
`PTO applies the claim construction principles outlined by
`this court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005).” (citations omitted)).
`
`Ocean Tomo Ex. 1014-013
`
`

`
`
`
` 14
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`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`that congress would alter the backdrop of existing law sub
`silentio).
`Moreover, Congress in enacting the AIA was well
`aware that the broadest reasonable interpretation stand-
`ard was the prevailing rule. See 157 Cong. Rec. S1375
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (allowing
`written statements to be considered in inter partes review
`“should . . . allow the Office to
`identify
`inconsistent
`statements made about claim scope—for example, cases
`where a patent owner successfully advocated a claim
`scope in district court that is broader than the ‘broadest
`reasonable construction’ that he now urges in an inter
`partes review”). It can therefore be inferred that Congress
`impliedly approved the existing rule of adopting the
`broadest reasonable construction.
`Cuozzo argues that judicial or congressional approval
`of the broadest reasonable interpretation standard for
`other proceedings is irrelevant here because the earlier
`judicial decisions relied on the availability of amendment,
`and the AIA limits amendments in IPR proceedings.7
`
`
`7 See, e.g., Yamamoto, 740 F.2d at 1571–72 (“An
`applicant’s ability to amend his claims to avoid cited prior
`art distinguishes proceedings before the PTO from pro-
`ceedings in federal district courts on issued patents.”
`(emphasis added)); Reuter, 670 F.2d at 1019 (“It is well
`settled that claims before the PTO are to be given their
`broadest reasonable interpretation consistent with the
`specification during the examination of a patent applica-
`tion since the applicant may then amend his claims . . . .”
`(internal quotation marks omitted)); Prater, 415 F.2d at
`1404–05 (“[T]his court has consistently taken the tack
`that claims yet unpatented are to be given the broadest
`reasonable interpretation consistent with the specification
`
`
`Ocean Tomo Ex. 1014-014
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`15
`
`But this case does not involve any restriction on
`amendment opportunities that materially distinguishes
`IPR proceedings from their predecessors in the patent
`statute. Section 316(d)(1) provides that a patentee may
`file one motion to amend in order to “[c]ancel any chal-
`lenged patent claim” or “[f]or each challenged claim,
`propose a reasonable number of substitute claims,” 35
`U.S.C. § 316(d)(1), though “[a]n amendment . . . may not
`enlarge the scope of the claims of the patent or introduce
`new matter,” id. § 316(d)(3). The PTO regulations provide
`that “[a] patent owner may file one motion to amend a
`patent, but only after conferring with the Board.” 37
`C.F.R. § 42.221(a). “The presumption is that only one
`substitute claim would be needed to replace each chal-
`lenged claim, and it may be rebutted by a demonstration
`of need.” Id. § 42.221(a)(3). The statute also provides that
`“[a]dditional motions to amend may be permitted upon
`the joint request of the petitioner and the patent own-
`er . . . or as permitted by regulations prescribed by the
`Director.” 35 U.S.C. § 316(d)(2). “A motion to amend may
`be denied where” the amendment either “does not respond
`to a ground of unpatentability involved in the [IPR] trial”
`or “seeks to enlarge the scope of the claims of the patent
`or introduce new subject matter.” 37 C.F.R. § 42.221(a)(2).
`Although the opportunity to amend is cabined in the
`IPR setting, it is thus nonetheless available. Here, the
`only procedural ground for rejecting the amendment that
`
`
`during the examination of a patent application since the
`applicant may then amend his claims . . . .”); see also, e.g.,
`In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (“As
`explained in the Manual of Patent Examining Procedure
`(MPEP) . . . , Applicant always has the opportunity to
`amend the claims during prosecution . . . .” (internal
`quotation marks omitted)).
`
`Ocean Tomo Ex. 1014-015
`
`

`
`
`
` 16
`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`Cuozzo proposed was that it enlarged the scope of the
`claims, in violation of § 316(d)(3). A bar on post-issuance
`broadening has long been part of pre-IPR processes for
`which precedent approved use of the broadest reasonable
`construction. See 35 U.S.C. §§ 251 (reissue beyond two
`years), id. § 305 (reexamination). Thus, the only amend-
`ment restriction at issue in this case does not distinguish
`pre-IPR processes or undermine the inferred congression-
`al authorization of the broadest reasonable interpretation
`standard in IPRs. If there are challenges to be brought
`against other restrictions on amendment opportunities as
`incompatible with using the broadest reasonable interpre-
`tation standard, they must await another case.
`The
`inference of congressional approval of the
`longstanding PTO construction standard also is not
`undermined by the fact that IPR may be said to be adju-
`dicatory rather than an examination. The repeatedly
`stated rationale for using the broadest reasonable inter-
`pretation standard—that claim language can be modified
`when problems are identified in the PTO, see supra note
`7—does not turn on whether the PTO identifies the
`problems by adjudication or by examination. Indeed,
`interference proceedings are also in some sense adjudica-
`tory, see Brand v. Miller, 487 F.3d 862, 867–68 (Fed. Cir.
`2007) (characterizing interference proceedings as adjudi-
`catory and holding that the Board’s decision be reviewed
`on the record), yet interference proceedings use a variant
`of the broadest reasonable interpretation standard, see
`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 500 (Fed.
`Cir. 1997) (“In the absence of ambiguity, it is fundamental
`that the language of a count should be given the broadest
`reasonable interpretation it will support . . . .” (quoting In
`re Baxter, 656 F.2d 679, 686 (CCPA 1981))). We conclude
`that Congress implicitly approved the broadest reasona-
`ble interpretation standard in enacting the AIA.
`
`Ocean Tomo Ex. 1014-016
`
`

`
`IN RE: CUOZZO SPEED TECHNOLOGIES, LLC
`
`17
`
`2
`Even if we were to conclude that Congress did not it-
`self approve the broadest reasonable
`interpretation
`standard in enacting the AIA, § 316 provides authority to
`the PTO to adopt the standard in a regulation. Section
`316(a)(2) provides that the PTO shall establish regula-
`tions “setting forth the standards for the showing of
`sufficient grounds to institute a review . . . .” 35 U.S.C.
`§ 316(a)(2). Section 316(a)(4) further provides the PTO
`with authority for “establishing and governing inter
`partes review under this chapter and the relationship of
`such review to other proceedings under this title.” Id.
`§ 316(a)(4). The broadest reasonable
`interpretation
`standard affects both the PTO’s determination of whether
`to institute IPR proceedings and the proceedings after
`institution and is within the PTO’s authority under the
`statute.
`Because Congress authorized the PTO to prescribe
`regulations, the validity of the regulation is analyzed
`according to the familiar Chevron framework. See United
`States v. Mead Corp., 533 U.S. 218, 226–27 (2001); Wilder
`v. Merit Sys. Prot. Bd., 675 F.3d 1319, 1322 (Fed. Cir.
`2012). Under Chevron, the first question is “whether
`Congress has directly spoken to the precise question at
`issue.” Chevron, U.S.A. v. Natural Res. Def. Council, Inc.,
`467 U.S. 837, 842 (1984); accord Cooper Techs. Co. v.
`Dudas, 536 F.3d 1330, 1337 (Fed. Cir. 2008) (quoting
`Hawkins v. United States, 469 F.3d 993, 1000 (Fed. Cir.
`2006)). If the statute is ambiguous, the second question is
`“whether the agency’s interpretation is based on a per-
`missible construction of the statutory language at issue.”
`Cooper, 536 F.3d at 1338 (quoting Hawkins, 469 F.3d at
`1000).
`In the text of the IPR statute, Congress directed the
`PTO in IPR proceedings to determine the “patentability”
`of