No Shepard's Signa1n1
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`As of: February 5, 2015 4:14 PM EST
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`In re Cuozz.o Speed Techs.
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`United States Court of Appeals for the Federal Circuit
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`February 4, 2015, Decided
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`2014-1301
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`Reporter
`2015 U.S. App. LEXIS 1699
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`IN RE CUOZZO SPEED TECHNOLOGIES, LLC.
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`petitioned the United States Patent and Trademark Office
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`("PTO") for inter partes review ("lPR") of claims IO, 14,
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`and 17 of the '074 patent. The PTO granted Garmin's
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`Prior History: r�·11 Appeal from the United States Patent
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`and Trademark Office, Patent Trial and Appeal Board in No. petition and instituted IPR. The Patent Trial and Appeal
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`Board (the "Board'') timely issued a final decision finding
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`IPR2012-0000 l .
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`claims 10, 14, and 17 obvious. The Board additionally
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`denied Cuozzo's motion to amend the '074 patent by
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`substituting new [*2] claims 21, 22, and 23 for claims 10,
`14, and 17.
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`AFFIRMED.
`Disposition:
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`Core Terms
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`Contrary to Cuozzo's contention, we hold that we lack
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`patent, broadest, display, Partes, reasonable interpretation,
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`jurisdiction to review the PTO's decision to institute IPR.
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`speed limit, proceedings, reexamination, district court, final
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`We affitm the Board's final detennination, finding no error
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`decision, speedometer, Invents, colored, speed, amend,
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`in the Board's claim construction under the broadest
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`integrally, argues, provides, vehicle's, mandamus,
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`reasonable interpretation standard, the Board's obvious-ness
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`regulations, motion to amend, embodiment, indicator,
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`determilllation, and the Board's denial of Cuozzo's motion
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`grounds, instituted, prior art, nonappealable, requires, global
`to amend.
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`Counsel: TIMOTHY M. SALMON, Cuozzo Speed
`BACKGROUND
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`Technologies, LLC, of Basking Ridge, New Jersey, argued
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`for appellant. Of counsel on the brief was JOHN R.
`Cuozzo is the assignee of the '074 patent, entitled "Speed
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`KASHA, Kasha Law LLC, of North Potomac, Maryland.
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`Limit Indicator and Method for Displaying Speed and the
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`Re.levant Speed Limit." which issued on August 17, 2004.
`TIMOTHY M. SALMON, Cuozzo Speed Technologies,
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`The '074 patent discloses an interface which displays a
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`LLC, of Basking Ridge, New Jersey, argued for appellant.
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`vehicle's current speed as well as the speed Limit. In one
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`Of counsel on the brief was JOHN R. KASHA, Kasha Law
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`embodiment, a red filter is superimposed on a wrute
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`LLC, of North Potomac, Maryland.
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`speedometer so that "speeds above the legal speed limit are
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`displayed in red ... whi]e the legal speeds are displayed in
`Judges: Before NEWMAN, CLEVENGER, and DYK,
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`white .... " Id. col. 5 II. 35-37. A global positioning system
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`Circuit Judges. Opinion for the court filed by Circuit Judge
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`("GPS") unit tracks the vehicle's location and identifies the
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`DYK. Dissenting opinion filed by Circuit Judge NEWMAN.
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`speed limit at that location. The red filter automatically
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`rotates when the speed limit changes, so that the speeds
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`above the speed Limit at that location are displayed in red.
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`The patent also states that the speed limit indicator [*3] may
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`take the form of a colored liquid crystal display ("LCD").
`Id. col. 3 II. 4-6, col. 6 11. 11-14. ln claim 10, the
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`independent claim at issue here, a colored display shows the
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`current speed limit, and the colored display is "integrally
`Cuozzo Speed Technologies ("Cuozzo") owns U.S. Pa-tent
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`attached" to the speedometer. Id. col. 7 I. I 0.
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`No. 6,778,074 (the '"074 patent"). Garmin Jnterna-tional,
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`Inc. and Garmjn USA, Inc. (collectively, "Garmin")
`v.
`Fresenius Kabi USA, LLC
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`U.S. Patent No. 8,476,010
`Exhibit 1032
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`Opinion by: DYK
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`Opinion
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`DvK, Circuit Judge.
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`Claim 10 recites: Bass and Spangenberg
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`Exh. 1032
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`

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`2015 U.S. App. LEXIS 1699, *4
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`Page 2 of 14
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`A speed limit indicator comprising:
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`a global positioning system receiver;
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`a display controller connected to said global
`positioning system receiver, wherein said display
`controller adjusts a colored display in response to
`signals from said global positioning system receiver
`to continuously update the delineation of which
`speed readings are in violation of the speed limit at
`a vehicle's present location; and
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`a speedometer integraUy attached to said colored
`display.
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`!d. col. 7 II. 1-10. Claim 14 is addressed to "[t]he speed limit
`indicator as defined in claim 10, wherein said colored
`display is a colored filter." !d. col. 7 II. 23-24. Claim 17
`recites: "[t]he speed limit indicator as defined in claim 14,
`wherein sajd 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 [*4] vehicle's present location." !d. col.
`8 II. 5-9.
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`On September 16, 2012, Gartnin filed a petition with the
`PTO to institute IPR of, inter alia, claims 10, 14, and 17 the
`'074 patent. Garmin contended that claim I 0 was invalid as
`anticipated under 35 U.S.C. § 102(e) or as obvious under 35
`U.S. C. § I 03(a) and that claims 14 and 17 were obvious
`under § 103(a ). The PTO instituted IPR, detennining that
`there was a. reasonable likelihood that claims 10, 14, and 17
`were obvious under §.......l.QJ_ over (I) U.S. Patent Nos.
`6,633,8 11 ("Au mayer''), 3,980,041 ("Evans''), 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.
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`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
`patentability 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 physicaJly joined together as a unit without
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`each part losing its own separate identity." [*5] J.A. 9. The
`Board found that claims I 0, 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.
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`The Board also denied Clllozzo's motion to amend the patent
`by replacing claims I 0, 14, and 17 with substitute claims 2 1,
`22, andl 23. The Board's denial of the motion to amend
`centered on proposed claim 2 1. 1 Claim 21 would have
`amended the patent to claim "a speedometer inte-grally
`attached to [a] colored display, wherein the speedometer
`comprises a liquid crystal display, and wiherein the colored
`display is the liquid crystal display." J.A. 357-58. The Board
`rejectedl the amendment because (I) substi-tute claim 21
`lacked written description support as required by 35 U.S. C.
`§.___Jjl, and (1l the substitute claims would improper) y
`enlarge the scope of the claims as construed by the Board.
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`Cuozzo appealed. The iPTO intervened, and we grant-ed
`Ga.rmin 's motion to withdraw as appellee.2 We have
`jurisdiction to review the Board's final decision under 2'8
`U.S.C. § 1295(a)(4)(A).
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`D ISCUSSION
`
`I
`
`TPRs proceed in two phases. Sr. Jude Med .. Cardiologv Div ..
`Inc. v. Volcano Corp .. 749 F3d 1373, I 375-76 (Fed. Ci1:
`20/4). 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. /d.
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`Cuozzo argues that the PTO improperly instituted IPR on
`claims 10 and 14 because the PTO relied on prior art that
`Gannin did not identify in its petition as grounds for JPR 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 institJUted 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 .... " ld. § 314(a).
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`1 The parti es 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.
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`2 Garmin filed a motion to [*6] withdraw because it agreed not to participate in any appeal of the IPR written decision as part of a
`settlement agreement with Cuozzo.
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`Exh. 1032
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`

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`2015 U.S. App. LEXIS 1699, *5
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`Page 3 of 14
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`Section 314(dl is entitled "No appeal" and! provides that
`"[t]he determination by the Director whether [*7]
`to
`institute an inter partes review under this section shall be
`final and nonappealable." 35 U.S.C. § 314fd). The PTO
`argues that § 314(dl precludes review of a de termination to
`institute JPR. Cuozzo argues that § 3/4(dl 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.
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`We have previously addressed § 314(dl 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 § 3/4(d)
`"certainly bars" interlocutory review of the PTO's denial of
`a petition for JPR. 749 F.3d at 1375-76. This result was
`supported by §...11.2., which "authorizes appeals to this court
`only from 'the final written decision of the [Board] .... "'
`ld. at 1375 (quoting 35 U.S. C. § 319) (alteration in original).
`Similarly, t!he bar to interlocutory review is supported by 35
`U.S.C. § 14/{c), which "authorizes appeal only by 'a party
`to an inter partes re-view ... who is dissatisfied with the
`final written decision of the [Board] under section 3/8(a ). "'
`!d. (quoting 35 U.S. C. § 14J(c)) (alterations in original). But
`while we stated that § 314 "may well preclude all review by
`any route," we did not decide the issue. !d. at 1376.
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`that § 314(d) prohibits review of the
`We conclude [':'8]
`decision to institute IPR even after a final decision. On its
`face, the provision is not directed to precluding review only
`before a firnal decision. It is written to exclude all review of
`the decision whether to institute review. Section 3/4(d)
`provides that the decision is both "nonappealable" and
`"final," i.e., not subject to further review. 35 U.S.C. §
`314(d). A d eclaration that the decision to institute is "final"
`cannot reasonably be interpreted as postponing review until
`after issuance of a final decision on patentability. Moreover,
`given that fL1.1.2. and § /4J(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 TPR statute expressly limit the
`Board's authority at the final decision stage to the grounds
`alleged in the IPR petition. It simply authorizes the Board to
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`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. § 31~(a J.
`
`Our decision in In re Hiniker Co .. 150 F3d 1362. /367
`(Fed. Cir. 1998), confirms [*9] the correctness of the PTO's
`position here. There, even absent a provision comparable to
`§ 314(c/),3 we held that a flawed decision to institute
`reexamination under 35 U.S.C. § 303 was not a basis for
`setting aside a tina! decision. Hiniker. 150 F3d 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)
`(]994). In Hiniker, the PTO instituted reexamination based
`on prior art considered in the origi-nal examination
`(Howard). Hiniker, 150 F3d 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. !d. at 1366. We held that our jurisdiction was only
`''over Hiniker's appeal from the [final] decision of the
`Board." ld. at 1367. While the final decision would have
`been subject to reversal if it had improperly relied only on
`prior art presented to the examiner,4 any error in instituting
`reexamination based on the Howard reference was "washed
`clean during the reexamination proceeding," which relied
`on new art. ld. The fact that the petition was defective is
`irrelevant because a proper petition could have been [*10]
`drafted. The same is even clearer here, where § 314(d)
`explicitly provides that there is no appeal available of a
`decision to institute. T here was no bar here to finding claims
`I 0 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 JPR 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 petition to institute
`IPR after the Board's final decision in situations where the
`PTO has clearly [*11]
`and indisputably exceeded its
`authority.
`
`3 Unlike .§.....l!.1, the reexamination statute only provides that "[a) determination by the Commissioner ... that no substantial new
`question of patentability has been raised will be final and nonappealable." 35 U.S.C. § 303(c) {1994) (emphasis added).
`
`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 Tech~. Com .. 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.
`
`Exh. 1032
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`

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`2015 U.S. App. LEXIS 1699, *II
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`Page 4 of 14
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`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
`relief was not available to chaJlenge the denial of a petition
`for IPR. Gjven the statutory scheme, there was no "'clear
`and indisputable right' to challenge a noninstitution decision
`directly in this court," as required for mandamus. /d. And in
`In re Procter & Gamble Co .. 749 F.3d 1376. 1378-79 (Fed.
`Cir. 2014), we held that mandamus was not available to
`provide immediate review of a decision to institute IPR.
`There was no "clear and indisputable right to this court's
`immediate review of a decision to institute an inter partes
`review, as would be needed for mandamus relief." /d. at
`1379. Furthermore, that "[wa]s not one of the rare situations
`in which
`irremediable
`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).
`/d. Nor do we do so now.
`
`Even if § 314 does not bar mandamus after a final decision,
`at least "thJ·ee conditions must be satisfied ['*12] before [a
`writ of mandamus] may issue." Chenev v. U.S. Dist. Courl
`[or the D.C., 542 U.S. 367. 380 (2004). "First, 'the party
`seeking iss11.1ance of the writ [must) have no other adequate
`means to attain the relief he desires."' !d. (quoting Kerr v.
`U.S. Dist. Court for the N. Dist. of Cal.. 426 U.S. 394. 403
`(]976) (alteration in original)). That condition 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."' I d. 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."
`/d. (citation omitted).
`
`Here, Cuozzo has not filed a mandamus petition, but even if
`we were to treat its appeal as a request for mandamus,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 invalidate claim 17 would by necessary
`
`implication also invalidate claims 10 and 14. [*13] See
`Callaway Golf' Co. v. Acushnet Co .. 576 F.3d 1331, 1344
`CF ed. Cil: 2009) ("A broader independent claim cannot be
`nonobvious where a dependent claim stemming from that
`independent claim is invalid for obviousness."). The PTO
`argues that Garmin implicitly asserted that claims 10 and 14
`were unpatentable 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
`proceedling. We need not decide whether mandamus to
`review institution ofiPR after a final decision is available in
`other circumstances.
`
`II
`Cuozzo contends in addition that the Board erred in finding
`the claims obvious, arguing initially that the Board should
`not have applied the broadest reasonable interpretation
`standard in claim constr!Uction.
`
`A
`The America Invents Act ("AlA") created IPR, but the
`statute [*14] 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 "establishing and
`governing inter partes review ... and the relationship of
`such review to other proceedings .. .. " 35 U.S.C. §
`316(a )(2), f..Ql{11. Pursuant to this authority, the PTO has
`promulgated 37 C.F.R. § 42.100(b), which proides that "[a]
`claim in an unexpired [patent shall be given its broadest
`reasonable construction in light of the specification of the
`patent in which it appears." 37 C.F.R. § 42. JOO(b ). Cuozzo
`argues that the PTO lacked authority to promulgate §.
`42.1 OO(b) and that the broadest reasonable interpretation
`standard is inappropriate in an adjudicatory JPR proceeding.
`The PTO argues that 35 U.S. C. § 3/6 provides the necessary
`authority to the PTO to promulgate § 42./00(b) and that the
`broadest reasonable interpretation is appropriately applied
`in the I!PR context.
`
`Before addressing the scope of the PTO's rulemaking
`authority, we consider the history of the broadest reasonab£e
`
`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 converse proposition that .. . an appeal can substitute for a writ in the sense that an atttempted appeal from
`an order that is nonappealable can be treated as a petition for a writ." (citations omitted)).
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`Exh. 1032
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`

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`2015 U.S. App. LEXTS 1699, * 14
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`Page 5 of 14
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`interpretation [*15] standard and the bearing of that history
`on the interpretation of the IPR statute. No section of the
`patent statute explicitly provides that the broadest reasonable
`interpretation standard shall be used in any PTO proceedings.
`
`Nonetheless, the broadest reasonable interpretation standard
`has been applied by the PTO and its predecessor for more
`than 100 years in various types of PTO proceedings. 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 wh:ich they are couched." Podlesak
`v. Mcln.nerney, 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. 7255 (Fed. Cir. 2074) ("Claims are generally given
`their 'broadest reasonable interpretation' consistent with the
`specification during reexamination." (citation omitted)); In
`reAm. Acad. o(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 justified.'" (quoting In re Yamamoto. 740 F.2d
`1569, 1571 (Fed. Cir. 1984))); In re Morris, 127 F.3d 1048.
`7054 (Fed. Cit: 1997) ("[W]e reject appellants' invitation to
`construe ei!ther of the cases [*16) cited by appellants so as
`to over-rule, sub silentio, decades old case law .... It would
`be inconsistent with the role assigned to the PTO in issuing
`a patent to require it to interpret claims in the same manner
`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. 207 F.2d 957. 954 (CCPA 1953) ("[I]t is ... well
`settled that ... the tribunals [of the PTO] and the reviewing
`courts in the initial consideration of patentability will give
`claims the broadest interpretation which, within reason, may
`be appHed.").
`
`This court has approved of the broadest reasonable
`inte rpretation standard in a variety of proceedings, including
`
`post-grant
`and
`intetferences,
`examinations,
`initial
`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 [*1!7] 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); Reese v. Hurst. 661 F.'ld
`1222. 1236 (CCPA 1981) (interferences); ln re Prater. 415
`F.2d 1393. 1404-05 (CCPA 1969! (examinations). Applying
`the broadest reasonable interpretation standard "reduce[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 ing Prater. 415 F.2d at
`1404-05).
`
`There is no indication that the AlA 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 existing law where Congress in
`enacting legislation is aware of the prevailing rule. As we
`held in GPX International Tire Corp. v. United States, "the
`principle of legislative ratification is well established. In the
`case of a widely known judicial decision [*18] or agency
`to be aware of an
`practice, Congress is presumed
`administrative or judicial interpretation of a statute and to
`adopt that interpretation when it re-enacts a statute without
`change." 666 F. 3d 732. 739 (Fed. Cit: 2011 J (internal
`quotation marks and citations omitted), superseded in part
`by statute as recognized in 678 F.3d 1308 (Fed. Cir. 2012);
`Astoria Fed. Sav. & Loan Ass 'n v. So/imino. 501 U.S. 108.
`110 (1991); Procter & Gamble Co. v. Kraft Foods Global.
`549 F.3d 842, 848-49 (Fed. Cir. 2008) (improper to presume
`that congress would alter the backdrop of existing law sub
`silentio).
`Here, Congress in enacting the AlA was well aware that the
`broadest reasonable
`interpretation standard was
`the
`prevailing rule. See 157 Cong. Rec. S 1375 (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 adopted the existing rule of adopting the
`broadest reasonable construction.
`
`6 The claims of an expired patent are the one exception where the broadest reasonable interpretation is not used because the patentee
`is unable to amend the claims. Rambus. 753 F.3d at 1256 ("If, a~ is the ca~e 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 cou11 in Phillips
`v. AWH Corp .. 415 F.3d 1303 (Fed. Cir. 2005)." (citations omitted)).
`
`Exh. 1032
`
`

`
`2015 U.S. App. LEXIS 1699, * 18
`
`Page 6 of 14
`
`Cuozzo argues that judicial or congressional approval of the
`broadest reasonable
`interpretation standard for other
`proceedings [* 19]
`is irrelevant here because the earlier
`judicial decisions relied on the availability of amendment,
`and the AlA limits amendments in IPR proceedings.7
`
`But IPR proceedings are not materially different in that
`respect. Section 316(d)(] I provides that a patentee may
`file one motion to amend in order to "[c]ancel any
`[*20]
`cha llenged patent claim" or "[f]or each challenged claim,
`propose a reasonable number of substitute claims," 35
`U.S.C. § 316(di( IJ, though "[a]n amendment . . . may not
`enlarge the scope of the claims of the patent or introduce
`new matter," id. § 316(cl)(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.
`§ 42.22](aJ. "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." !d. §.
`42.22l(a)(3 ). The statute also provides that "[a]dditional
`motions to amend may be permitted upon the jo int request
`of the petitioner and the patent owner . . .. " 35 U.S.C. §
`3J6(d)(2J. "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.P. R. § 42.22 l (a)(2).
`
`Although the opportunity to amend is cabined in the IPR
`setting, it is thus nonetheless available. T he fact that the
`patent owner may be limited to a single amendment, may
`not broaden the claims, and must address the ground of
`unpatentability is not a material difference. [*21] Nor is the
`
`fact that IPR may be said to be adjudicatory rather than an
`examination. Interference proceedings are also in some
`sense adjudicatory, see Brand v. Miller. 487 F.3d 862.
`867-68 (Fed. Cil: 20071 (characterizing
`interference
`proceedings as adjudicatory and holding that the Board's
`decision be reviewed on the record), yet the broadest
`reasonable interpretation standard applies, see Genentech,
`Inc. v. Chiron Com .. 112 F. 3d 495, 500 (Fed. Cit: J997!('1n
`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.2cl 679, 686 (CCPA 1981))). In any event, Congress in
`enacting the AlA was aware of these differences in terms of
`amendments and adjudication and did not provide for a
`different standard than the broadest reasonable interpretation
`standard. We conclude that Congress implicitly adopted the
`broadest reasonable interpretation standard in enacting the
`AJA.
`
`2
`
`Even if we were to conclude that Congress did not adopt the
`broades.t reasonable interpretation standard in enacting the
`AlA, § 3 16 provides authority to the PTO to conduct
`rulemaking. Although we have previously held that 35
`U.S. C. § 2(b) does not grant substantive ruJemaking authority
`to the PTO, s Cooper Te dzs. Co. v. Dudas. 536 F. 3d 1330.
`1335-36 (Feel. Cir. 2008 ), the AlA granted new rulemakin g
`authority to the PTO. Section 316(a)(2) provides that the
`PTO shall establish regulations [*22]
`"setting forth the
`standards for the showirng 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 "establishin g
`
`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 proceedings in federal district courts on issued patents." (emphasis added)); Reute r. 670 F.2d at I 019
`("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 during the examination of a patent application since the applicant may then
`amend his claims . ... "); see also, e.g., In re Skvorec~. 580 F. 3d 1262. 1267 (Fed. Cir. 2009) ("As explained in tlhe Manual of Patent
`Examining Procedure (MPEP) ... , Applicant always has the opportunity to amend the claims dw·ing prosecution . ... " (internal quotation
`marks omitted)).
`
`8 Section 2 provides, in relevant part:
`
`(b) Specific Powers.-
`
`the Office-
`
`(2) may establish regulations, not inconsistent with law, which
`
`(A) shall govern the conduct of proceedings in the Office;
`
`(B) shall be made in accordance with section 553 of title 5;
`
`Exh. 1032
`
`

`
`2015 U.S. App. LEXTS 1699, *22
`
`Page 7 of 14
`
`and governing inter partes review under thjs chapter and the
`relationship of such review to other proceedings under this
`title." ld. § 316(a/(4). These provisions expressly provide
`the PTO with authority to establish regulations setting the
`"standards" for instituting review and regulating IPR
`proceedings. 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 [*23] prescribe
`regulations, the validity of the regulation is analyzed
`according to the familiar Chevron framework. See United
`States v. Mead Core .. 533 U.S. 218. 226-27 (2001 J; Wilder
`v. Merit Svs. 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. 536 F.3d at 1337
`(quoting Hawkins I ( United States. 469 FJd 993. 1000 (Fed.
`Ci1: 2006)). If the statute is ambiguous, the second question
`is "whether the agency's interpretation is based on a
`permissible 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 was si lent on the
`subject of claim construction standards, and., if we assume
`arguendo that it did not adopt the broadest reasonable
`interpretation standard, step one of Chevron is satisfied. We
`proceed to step two of the Chevron analysis. The regulation
`here presents a reasonable interpretation of the stat