throbber

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`HUAWEI DEVICE USA, INC., HUAWEI DEVICE CO. LTD., HUAWEI
`TECHNOLOGIES CO. LTD., HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD., HUAWEI TECH.
`INVESTMENT CO. LTD., HUAWEI DEVICE (HONG KONG) CO. LTD.
`Petitioners
`v.
`
`CYWEE GROUP LTD.
`(record) Patent Owner
`
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`
`
`
`
`DECLARATION OF BENJAMIN M. KLEINMAN IN SUPPORT OF
`REPLY TO OPPOSITION TO PETITIONERS’
`MOTION FOR JOINDER TO IPR2018-00563
`
`
`
`

`

`
`
`I, Benjamin M. Kleinman, am over eighteen years of age and would be
`
`competent to testify as to the matters set forth herein if called upon to do so.
`
`1.
`
`Exhibit 1 is a true and correct copy of 83 FR 51340-01, 2018 WL
`
`4916068, entitled “Changes to the Claim Construction Standard for Interpreting
`
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board” and dated
`
`October 11, 2018.
`
`2.
`
`Exhibit 2 is a true and correct copy of the correspondence by which
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`Huawei, on March 30, 2018, served its invalidity contentions in the district court
`
`litigation (CyWee Group Ltd. v. Huawei Technologies Co., Inc., et al., E.D. Tex.
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`Case 2:17-cv-00495-WCB-RSP) related to the patent at issue in this proceeding.
`
`
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing declaration is true and correct. Executed this 8th day of
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`March, 2019 at San Francisco, California.
`
`
`
`
`
`
`
`
`/s/
`Benjamin M. Kleinman
`KILPATRICK TOWNSEND & STOCKTON LLP
`Two Embarcadero Center 19th Floor
`San Francisco, CA 94111
`(415) 273-7568
`bkleinman@kilpatricktownsend.com
`
`
`
`
`
` - 1 -
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 8, 2019, I caused a true and correct copy of
`
`the foregoing DECLARATION OF BENJAMIN M. KLEINMAN IN
`
`SUPPORT OF REPLY TO OPPOSITION TO PETITIONERS’ MOTION
`
`FOR JOINDER TO IPR2018-00563 to be served via electronic mail as agreed by
`
`the Patent Owner on the following attorneys of record:
`
`Jay P. Kesan, Esq.
`Cecil E. Key, Esq.
`Arlen Papazian, Esq.
`DiMuro Ginsberg PC
`1101 King Street, Suite 610
`Alexandria, VA 22314
`Telephone: 703-684-4333
`Email:
`jkesan@dimuro.com
`
`
`ckey@dimuro.com
`
`
`apapazian@dimuro.com
`
`
`/s/ Kristopher L. Reed
`Kristopher L. Reed (Reg. No. 58,694)
`
`Counsel for Petitioners
`
`
`
`
`
`
`
`
`
`
`
`71659925V.1
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` - 2 -
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`EXHIBIT 1
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`EXHIBIT 1
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`

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`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
`
`83 FR 51340-01, 2018 WL 4916068(F.R.)
`RULES and REGULATIONS
`DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`37 CFR Part 42
`[Docket No. PTO-P-2018-0036]
`RIN 0651-AD16
`
`Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board
`
`Thursday, October 11, 2018
`
`AGENCY: United States Patent and Trademark Office, Department of Commerce.
`
`*51340 ACTION: Final rule.
`
`SUMMARY: The United States Patent and Trademark Office (“USPTO” or “Office”) revises the claim construction
`standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and the transitional program
`for covered business method patents (“CBM”) proceedings before the Patent Trial and Appeal Board (“PTAB” or
`“Board”). In particular, the Office is replacing the broadest reasonable interpretation (“BRI”) standard such that claims
`shall now be construed using the same claim construction standard that is used to construe the claim in a civil action
`in federal district court. This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied
`in federal courts to construe patent claims. The Office also amends the rules to add that any prior claim construction
`determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission
`(“ITC”), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.
`DATES:
`Effective Date: The changes in this final rule take effect on November 13, 2018.
`
`Applicability Date: This rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed
`on or after the effective date.
`
`FOR FURTHER INFORMATION CONTACT: Michael Tierney and Jacqueline Wright Bonilla, Vice Chief
`Administrative Patent Judges, by telephone at (571) 272-9797.
`
`SUPPLEMENTARY INFORMATION:
`
`Executive Summary
`Purpose: This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the
`Leahy-Smith America Invents Act (“AIA”) providing for trials *51341 before the Office, by replacing the BRI standard
`for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim
`construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b). The rule adopts
`the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under the final rule, the PTAB will apply in an
`AIA proceeding the same standard applied in federal courts to construe patent claims. This final rule also amends the
`rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
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`before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination
`is timely filed in the record of the IPR, PRG or CBM proceeding.
`
`Summary of Major Provisions: The Office is using almost six years of historical data, user experiences, and stakeholder
`feedback to further shape and improve PTAB proceedings, particularly IPR, PGR, and CBM proceedings (“AIA
`proceedings”). As part of the Office's continuing efforts to improve AIA proceedings, the Office now changes the claim
`construction standard applied in AIA proceedings involving unexpired patent claims and substitute claims proposed in
`a motion to amend. The Supreme Court of the United States has endorsed the Office's ability to choose an approach to
`claim construction for AIA proceedings. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (“That [the
`appropriate claim construction standard for AIA proceedings] is a question that Congress left to the particular expertise
`of the Patent Office.”).
`
`In the notice of proposed rulemaking, the Office sought comments on the Office's proposed changes to the claim
`construction standard used for interpreting unexpired patent claims and substitute claims proposed in a motion to
`amend. Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceeding Before the Patent Trial
`and Appeal Board, 83 FR 21221 (May 9, 2018).
`
`The Office received a total of 374 comments, including 297 comments from individuals, 45 comments from associations,
`1 comment from a law firm, and 31 comments from corporations. The majority of the comments were supportive
`of changing the claim construction standard along the lines set forth in the proposed rule. For example, major bar
`associations, industry groups, patent practitioners, legal professors and scholars, and individuals all supported the
`change. The commentators also provided helpful insights and suggested revisions, which have been considered in
`developing this final rule. While there was broad support expressed for using the federal court standard set forth in
`the proposed rule, some commentators indicated that they were opposed to the change. The Office appreciates the
`thoughtful comments representing a diverse set of views from the various public stakeholder communities. Upon careful
`consideration of the public comments, taking into account the effect of the rule changes on the economy, the integrity
`of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete instituted
`proceedings, the Office adopts the proposed rule changes (with minor deviations in the rule language, as discussed below).
`Any deviations from the proposed rule are based upon a logical outgrowth of the comments received.
`
`In particular, this final rule fully adopts the federal court claim construction standard, in other words, the claim
`construction standard that is used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in
`Phillips and its progeny. This rule states that the PTAB in an AIA proceeding will apply the same standard applied in
`federal courts to construe patent claims. The claim construction standard adopted in this final rule also is consistent with
`the same standard that the Office has applied in interpreting claims of expired patents and soon-to-be expired patents.
`See, e.g., Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017) (noting that “[t]he Board
`construes claims of an expired patent in accordance with Phillips . . . [and] [u]nder that standard, words of a claim are
`generally given their ordinary and customary meaning”). This final rule also revises the rules to add that the Office will
`consider any prior claim construction determination concerning a term of the claim that has been made in a civil action,
`or a proceeding before the ITC, if that prior claim construction is timely made of record in an AIA proceeding.
`
`Costs and Benefits: This final rule is significant under Executive Order 12866 (Sept. 30, 1993).
`
`Background
`On September 16, 2011, the AIA was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)), and within one year, the
`Office implemented rules to govern Office practice for AIA proceedings, including IPR, PGR, CBM, and derivation
`proceedings pursuant to 35 U.S.C. 135, 316 and 326 and AIA sec. 18(d)(2). See Rules of Practice for Trials Before the
`Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 48612 (Aug.
`14, 2012); Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
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`Program for Covered Business Method Patents, 77 FR 48680 (Aug. 14, 2012); Transitional Program for Covered
`Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention, 77 FR 48734
`(Aug. 14, 2012). Additionally, the Office published a Patent Trial Practice Guide to advise the public on the general
`framework of the regulations, including the procedure and times for taking action in each of the new proceedings. See
`Office Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012).
`
`Previously, in an effort to gauge the effectiveness of the rules governing AIA proceedings, the Office led a nationwide
`listening tour in April and May of 2014. During the listening tour, the Office solicited feedback on how to make AIA
`proceedings more transparent and effective by adjusting the rules and guidance to the public where necessary. To
`elicit even more input, in June of 2014, the Office published a Request for Comments in the Federal Register and, at
`public request, extended the period for receiving comments to October 16, 2014. See Request for Comments on Trial
`Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 79 FR 36474 (June 27, 2014)
`(“Request for Comments”). The Request for Comments asked seventeen questions on ten broad topics, including a
`general catchall question, to gather public feedback on any changes to AIA proceedings that might be beneficial. See
`Request for Comments, 79 FR at 36476-77. At least one question was directed to the claim construction standard.
`
`Upon receiving comments from the public and carefully reviewing the comments, the Office published two final rules in
`response to the public feedback on this request for comments. In the first final rule, the Office changed the existing rules
`to, among other things: (1) Increase the page limit for patent owner's motion to amend by ten pages and allow a claims
`appendix to be filed with the motion; and (2) increase the page limit for petitioner's reply to patent owner's response by
`ten pages. *51342 Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80 FR
`28561 (May 19, 2015). In the second final rule, the Office changed the existing rules to, among other things: (1) Allow
`new testimonial evidence to be submitted with a patent owner's preliminary response; (2) allow a claim construction
`approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final
`written decision; (3) replace page limits with word count limits for major briefing; and (4) add a Rule 11-type certification
`for papers filed in a proceeding. Amendments to Rules of Practice for Trials Before the Patent Trial and Appeal Board,
`81 FR 18750 (April 1, 2016).
`
`The Office last issued a rule package regarding AIA proceedings on April 1, 2016. This final rule was based on comments
`received during a comment period that opened on August 20, 2015 (only a month after the Federal Circuit's July 2015
`decision in the appeal of the first IPR filed, Cuozzo Speed Technologies, LLC v. Lee) and that closed on November 18,
`2015. At that time, the appeal of the Federal Circuit's decision in Cuozzo had not yet been decided by the Supreme Court
`(it was decided on June 20, 2016). Due to the life cycle of AIA trial proceedings and appeals, the comments received during
`this 2015 comment period came when few Federal Circuit decisions had been issued, and there had been no decisions on
`AIA appeals from the Supreme Court. From 2016 to present there has been a six-fold increase in the number of opinions
`relating to AIA proceedings issued by the Federal Circuit as compared to the prior 2012-2015 time frame. Additionally,
`since the last rule package, the Office has continued to receive extensive stakeholder feedback requesting adoption of
`the district court claim construction standard for all patents challenged in AIA proceedings. Many of the comments
`are based on case law and data that was not available when the comments to the last rule package were received in
`FY 2015. Further, recent studies not available at the time of the 2016 rule package support the concerns expressed by
`stakeholders regarding the unfairness of using a different claim construction standard in AIA proceedings than that used
`by the district courts. See Niky R. Bagley, Treatment of PTAB Claim Construction Decisions: Aspiring to Consistency
`and Predictability, 32 Berkeley Tech. L.J. 315, 355 (2018) (the application of a different standard may encourage a
`losing party to attempt a second bite at the apple, resulting in a waste of the parties' and judicial resources alike); Kevin
`Greenleaf et al., How Different are the Broadest Reasonable Interpretation and Phillips Claim Construction Standards
`15 (2018), available at http://www.ipo.org/wp-content/uploads/2018/07/BRI-v-Phillips-Final.pdf (prospect of differing
`claim constructions for same claim term is troubling and these differences can determine the outcome of a case); Laura
`E. Dolbow, A Distinction without a Difference: Convergence in Claim Construction Standards, 70 V and L. Rev. 1071,
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` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
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`1103 (2017) (maintaining the separate standards presents problems with inefficiency, lack of uniformity, and decreased
`confidence in patent rights).
`
`Claim Construction Standard
`Prior to this rulemaking, the PTAB construed unexpired patent claims and proposed substitute claims in AIA
`proceedings using the BRI standard. The BRI standard differs from the standard used in federal courts and the ITC,
`which construe patent claims in accordance with the principles that the United States Court of Appeals for the Federal
`Circuit articulated in Phillips.
`
`Although the BRI standard is consistent with longstanding agency practice for patents in examination, the fact that
`the Office uses a claim construction standard in AIA proceedings that is different from that used by federal courts and
`the ITC means that decisions construing the same or similar claims in those fora may be different from those in AIA
`proceedings and vice versa. Minimizing differences between claim construction standards used in the various fora will
`lead to greater uniformity and predictability of the patent grant, improving the integrity of the patent system. In addition,
`using the same standard in the various fora will help increase judicial efficiency overall. One study found that 86.8%
`of patents at issue in AIA proceedings also have been the subject of litigation in the federal courts, and the Office is
`not aware of any change in this percentage since this study was undertaken. Saurabh Vishnubhakat, Arti K. Rai & Jay
`P. Kesan, Strategic Decision Making in Dual PTAB and District Court Proceedings, 31 Berkeley Tech. L.J. 45 (2016)
`(available at https://ssrn.com/abstract=2731002). The high percentage of overlap between AIA proceedings and district
`court litigation favors using a claim construction standard in AIA proceedings that is the same as the standard used
`by federal courts and the ITC. That is, the scope of an issued patent should not depend on the happenstance of which
`court or governmental agency interprets it, at least as far as the objective rules go. Employing the same standard for
`AIA proceedings and district courts improves uniformity and predictability as it allows the different fora to use the same
`standards in interpreting claims. See, e.g., Automated Packaging Sys., Inc. v. Free Flow Packaging Int'l, Inc., No. 18-
`cv-00356, 2018 WL 3659014, at *3 (N.D. Cal. Aug. 2, 2018) (finding that a party's failure to advance a particular claim
`construction during an IPR proceeding “is not probative to Markman claim construction” because material differences
`exist between the broadest reasonable interpretation and claim construction under Phillips); JDS Techs., Inc. v. Avigilon
`USA Corp., No. 15-cv-10385, 2017 WL 4248855, at *6 (E.D. Mich. Jul. 25, 2017) (holding that arguments in IPR
`submissions are not relevant to claim construction because “the USPTO's broadest reasonable construction standard
`of claim construction has limited significance in the context of patent infringement, which is governed by the more
`comprehensive scrutiny and principles required by Phillips and its progeny”).
`
`In addition, having AIA proceedings use the same claim construction standard that is applied in federal courts and ITC
`proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard
`in AIA proceedings. According to some patent owners, the same claim construction standard should apply to both a
`validity (or patentability) determination and an infringement determination. Because the BRI standard potentially reads
`on a broader universe of prior art than does the Phillips standard, a patent claim could potentially be found unpatentable
`in an AIA proceeding on account of claim scope that the patent owner would not be able to assert in an infringement
`proceeding. For example, even if a competitor's product would not be found to infringe a patent claim (under the Phillips
`standard) if it was sold after the patent's effective filing date, the same product nevertheless could potentially constitute
`invalidating prior art (under the BRI standard) if publicly sold before the patent's effective filing date. As noted by one
`study, the possibility of differing constructions for the same claim term is troubling, especially when claim construction
`takes place at the same time in parallel district court proceedings and USPTO proceedings. Greenleaf at 3.
`
`The Office's goal is to implement a balanced approach, providing greater predictability and certainty in the patent
`*51343 system. The Office has carefully considered the submitted comments in view of “the effect of [the] regulation
`on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office
`to complete timely the proceedings in promulgating regulations.” 35 U.S.C. 316(b) and 326(b). Under 35 U.S.C. 316(a)
`(4) and 326(a)(4), the Office shall prescribe regulations establishing and governing IPR, PGR, and CBM proceedings
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
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`and the relationship of such reviews to other proceedings, including civil actions under 35 U.S.C. 282(b). Under 35
`U.S.C. 316(a)(2) and 326(a)(2), the Office must prescribe regulations “setting forth the standards for the showing of
`sufficient grounds to institute a review.” Congress intended these administrative trial proceedings to provide “quick and
`cost effective alternatives” to litigation in the courts. H.R. Rep. No. 112-98, pt. 1, at 48 (2011), as reprinted in 2011
`U.S.C.C.A.N. 67, 78; see also id. at 40 (“[The AIA] is designed to establish a more efficient and streamline patent system
`that will improve patent quality and limit unnecessary and counterproductive litigation costs.”). The claim construction
`standard could be outcome determinative. PPC Broadband, Inc. v. Corning Optical Comm'ns RF, LLC, 815 F.3d 734,
`740-42 (Fed. Cir. 2016) (noting that “[t]his case hinges on the claim construction standard applied—a scenario likely to
`arise with frequency”); see also Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1377 (Fed. Cir.
`2017) (noting that “the Board in IPR proceedings operates under a broader claim construction standard than the federal
`courts”); Google LLC v. Network-1 Techs., Inc., No. 2016-2509, 2018 WL 1468370, at *5 (Fed. Cir. Mar. 26, 2018)
`(nonprecedential) (holding that “[i]n order to be found reasonable, it is not necessary that a claim be given its correct
`construction under the framework laid out in Phillips.”). Using the same claim construction standard as the standard
`applied in federal courts would “seek out the correct construction—the construction that most accurately delineates the
`scope of the claim invention—under the framework laid out in Phillips.” PPC Broadband, 815 F.3d at 740.
`
`In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend,
`shall be construed using the same claim construction standard that would be used to construe the claim in a civil action
`under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. This rule
`reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent
`claims. This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims
`in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips
`and its progeny.
`
`Under the amended rules as adopted in this final rule, the Office will construe patent claims and proposed substitute
`claims in an IPR, PGR, or CBM proceeding by taking into account the claim language itself, the specification, the
`prosecution history of the patent, and extrinsic evidence, among other things, as briefed by the parties. Having the
`same claim construction standard for both the original patent claims and proposed substitute claims will reduce the
`potential for inconsistency in the interpretation of the same or similar claim terms. Additionally, using the federal court
`claim construction standard is appropriate because, among other things, amendments proposed in AIA proceedings
`are required to be narrowing, are limited to a reasonable number of substitute claims, and are required to address
`patentability challenges asserted against the original patent claims. Using the same claim construction standard for
`interpreting both the original and amended claims also avoids the potential of added complexity and inconsistencies
`between PTAB and federal court proceedings, and this allows, among other things, the patent owner to understand the
`scope of the claims and more effectively file motions to amend. Additionally, having the same construction will reduce
`the potential for situations where a claim term of an original patent claim is construed one way under the federal court
`standard and yet the very same or similar term is construed a different way under BRI where it appears in a proposed
`substitute claim.
`
`The Office will apply the standard used in federal courts, in other words, the claim construction standard that would
`be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips. This rule reflects
`that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
`For example, claim construction begins with the language of the claims. Phillips, 415 F.3d at 1312-14. The “words of
`a claim are generally given their ordinary and customary meaning,” which is “the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the
`patent application.” Id. at 1312-13. The specification is “the single best guide to the meaning of a disputed term and . . .
`acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” Id. at
`1321 (internal quotation marks omitted). Although the prosecution history “often lacks the clarity of the specification
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
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`and thus is less useful for claim construction purposes,” it is another source of intrinsic evidence that can “inform the
`meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor
`limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. at
`1317. Extrinsic evidence, such as expert testimony and dictionaries, may be useful in educating the court regarding the
`field of the invention or helping determine what a person of ordinary skill in the art would understand claim terms to
`mean. Id. at 1318-19. However, extrinsic evidence in general is viewed as less reliable than intrinsic evidence. Id.
`
`Additionally, to the extent that federal courts and the ITC apply the doctrine of construing claims to preserve their
`validity as described in Phillips, the Office will apply this doctrine in those rare circumstances in AIA proceedings.
`Phillips, 415 F.3d at 1327-28. As the Federal Circuit recognized in Phillips, this doctrine is “of limited utility.” Id. at 1328.
`Federal courts have not applied that doctrine broadly and have “certainly not endorsed a regime in which validity analysis
`is a regular component of claim construction.” Id. at 1327. The doctrine of construing claims to preserve their validity
`has been limited to cases in which “the court concludes, after applying all the available tools of claim construction, that
`the claim is still ambiguous.” Id. (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)).
`Moreover, the Federal Circuit “repeatedly and consistently has recognized that courts may not redraft claims, whether
`to make them operable or to sustain their validity.” Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339
`(Fed. Cir. 2011); see also MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1332 (Fed. Cir. 2007) (noting
`that “validity construction *51344 should be used as a last resort, not first principle”).
`
`When construing claims in IPR, PGR, and CBM proceedings, the Office will take into account the prosecution history
`that occurred previously at the Office, including before an examiner during examination, reissue, reexamination, and
`prior AIA proceedings. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017) (“Because an IPR
`proceeding involves reexamination of an earlier administrative grant of a patent, it follows that statements made by
`a patent owner during an IPR proceeding can be considered during claim construction and relied upon to support a
`finding of prosecution disclaimer.”). This will also include prosecution before an examiner in a related application where
`relevant (Trading Technologies Intern., Inc. v. Open E Cry, LLC, 728 F.3d 1309 (Fed. Cir. 2013)) and any argument
`made on appeal of a rejection before the grant of the patent for which review is sought, as those arguments are before
`the examiner when the decision to allow an application is made (see TMC Fuel Injection System, LLC v. Ford Motor
`Co., 682 Fed. Appx. 895 (Fed. Cir. 2017)).
`
`During an AIA proceeding, the patent owner may file a motion to amend an unexpired patent to propose a reasonable
`number of substitute claims, but the proposed substitute claims “may not enlarge the scope of the claims of the patent
`or introduce new matter.” 35 U.S.C. 316(d) and 326(d); 37 CFR 42.121(a)(2) and 42.221(a)(2); see also Aqua Prods.,
`Inc. v. Matal, 872 F.3d 1290, 1306 (noting that “[t]he patent owner proposes an amendment that it believes is sufficiently
`narrower than the challenged claim to overcome the grounds of unpatentability upon which the IPR was instituted”).
`As discussed above, and among other things, having the same claim construction standard for both the original patent
`claims and proposed substitute claims will reduce the potential for inconsistency in the interpretation of the same or
`similar claim terms.
`
`The Office does not expect that this rule will result in direct costs to applicable entities. The Office's understanding is
`informed partly by the PTAB's experience in applying Phillips in some AIA trials (as noted herein, PTAB has used
`Phillips for AIA trials concerning expired patents since 2012 and for AIA trials concerning soon-to-be-expired patents
`since 2016). In the PTAB proceedings that are currently conducted using the Phillips standard, PTAB applies the same
`procedures—including the same page limits and other briefing requirements—as in the PTAB proceedings that use the
`BRI standard. In other words, the PTAB currently uses the same regulations, procedures, and guidance for both types
`of AIA trials: i.e., for both the AIA trials that use the BRI standard as well as those AIA trials (concerning expired and
`soon-to-expire patents) that use the Phillips standard. These are found in the Code of Federal Regulations (at 37 CFR
`part 42) and on USPTO's website, including at the following page where USPTO has links to the relevant regulations
`as well as the Trial Practice Guide that informs the public of standard practices before PTAB during AIA trials: https://
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`

`

`Changes to the Claim Construction Standard for Interpreting..., 83 FR 51340-01
`
`www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/resources. Because these are used now for
`trials under both BRI and Phillips, USPTO does not need to revise these procedures and guidance to implement the
`change set forth in this final rule, and does not need to make regulatory changes other than those set forth in this final rule.
`
`Moreover, PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or
`otherwise incur more expense in their AIA trials than parties in AIA proceedings under BRI. The USPTO's experience is
`that arguments under Phillips are not more complicated or more lengthy than arguments under the BRI standard. Rather,
`both standards are familiar to patent practitioners appearing before the USPTO and district courts. Consequently
`USPTO expects that these proceedings utilizing the Phillips standard will operate procedurally in much the same way
`as BRI proceedings using the BRI standard, that they will cost USPTO and parties no more to conduct, and that they
`will be completed within the statutory deadline. In sum,

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