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`rmm‘nohl
`GPO
`
`51340
`Federal Register/Vol. 83, No. 197/ Thursday, October 11, 2018/ Rules and Regulations
`
`contact the person listed in the FOR
`FURTHER INFORMATION CONTACT section
`above.
`
`E. Unfunded Mandates Reform Act
`The Unfunded Mandates Reform Act
`of 1995 [2 U.S.C. 1531—1538) requires
`Federal agencies to assess the effects of
`their discretionary regulatory actions. In
`particular, the Act addresses actions
`that may result in the expenditure by a
`State, local, or tribal government, in the
`aggregate, or by the private sector of
`$100,000,000 (adjusted for inflation] or
`more in any one year. Though this rule
`will not result in such an expenditure,
`we do discuss the effects of this rule
`elsewhere in this preamble.
`F. Environment
`
`We have analyzed this rule under
`Department of Homeland Security
`Directive 023—01 and Commandant
`Instruction M16475.1D, which guide the
`Coast Guard in complying with the
`National Environmental Policy Act of
`1969 [42 U.S.C. 4321—43701], and have
`determined that this action is one of a
`
`category of actions that do not
`individually or cumulatively have a
`significant effect on the human
`environment. This rule prohibits transit
`on a one-mile stretch of the Tennessee
`River for about 12 hours on weekdays
`only during a one-month period. It is
`categorically excluded from further
`review under paragraph L60(a) of
`Appendix A, Table 1 of DHS Instruction
`Manual 023—01—001—01, Rev. 01. A
`Record of Environmental Consideration
`supporting this determination is
`available in the docket where indicated
`under ADDRESSES.
`
`G. Protest Activities
`
`The Coast Guard respects the First
`Amendment rights of protesters.
`Protesters are asked to contact the
`
`person listed in the FOR FURTHER
`INFORMATION CONTACT section to
`
`coordinate protest activities so that your
`message can be received without
`jeopardizing the safety or security of
`people, places, or vessels.
`
`List of Subjects in 33 CFR Part 155
`Harbors, Marine safety, Navigation
`(water), Reporting and recordkeeping
`requirements, Security measures,
`Waterways.
`For the reasons discussed in the
`preamble, the U. S. Coast Guard amends
`33 CFR part 165 as follows:
`PART 165—REGULATED NAVIGATION
`AREAS AND LIMITED ACCESS AREAS
`
`l 1. The authority citation for part 165
`continues to read as follows:
`
`Authority: 33 U.S.C. 1231; 50 U.S.C. 191;
`33 CFR 1.05—1, 6.04—1, 6.04—6, and 160.5;
`Department of Homeland Security Delegation
`No. 0170.2.
`
`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`l 2. Add new § 165.T08—0937 to read as
`follows:
`
`§ 165108—0937 Safety Zone; Transmission
`Line Survey, Tennessee River, Miles 300 to
`302, Decatur, AL.
`
`(a) Location. All navigable waters of
`the Tennessee River from mile marker
`300.0 to mile marker 302.0, Decatur, AL.
`
`(b) Effective period. This section is
`effective from 8 a.m. on October 10,
`2018 through 6 pm. on October 17,
`2018, or until the underwater
`transmission line survey work is
`finished, whichever occurs earlier.
`
`(c) Enforcement periods. This section
`will be enforced each day during the
`effective period from 8 a.m. through
`noon, and from 1 pm. through 6 pm.
`A safety vessel will coordinate all vessel
`traffic during the enforcement periods.
`(d) Regulations. (1) In accordance
`with the general regulations in § 165.801
`of this part, entry into this area is
`prohibited unless authorized by the
`Captain of the Port Sector Ohio Valley
`(COTP) or a designated representative.
`A designated representative is a
`commissioned, warrant, or petty officer
`of the U.S. Coast Guard assigned to
`units under the operational control of
`Sector Ohio Valley, U.S. Coast Guard.
`(2) Persons or vessels requiring entry
`into or passage through the area must
`request permission from the COTP or a
`designated representative. U.S. Coast
`Guard Sector Ohio Valley may be
`contacted on VHF Channel 13 or 16, or
`at 1—800—253—7465.
`
`(3) A safety vessel will coordinate all
`vessel traffic during the enforcement of
`this safety zone. All persons and vessels
`permitted to enter this safety zone must
`transit at their slowest safe speed and
`comply with all directions issued by the
`COTP or the designated representative.
`(e) Information broadcasts. The COTP
`or a designated representative will
`inform the public of the enforcement
`times and dates for this safety zone
`through Broadcast Notices to Mariners
`(BNMs), Local Notices to Mariners
`(LNMs), and/or Marine Safety
`Information Bulletins (MSIBs), as
`appropriate.
`Dated: October 5, 201B.
`M.B. Zamperini,
`Captain, U.S. Coast Guard, Captain of the
`Port Sector Ohio Valley.
`[FR Doc. 2018—22160 Filed 10—10—18; 8:45 am]
`BILLING CODE 9110-04-P
`
`37 CFR Part 42
`
`[Docket No. PTO-P—2018—0036]
`RIN 0651—AD1 6
`
`Changes to the Claim Construction
`Standard for Interpreting Claims in
`Trial Proceedings Before the Patent
`Trial and Appeal Board
`AGENCY: United States Patent and
`Trademark Office, Department of
`Commerce.
`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)
`2 72—9 797.
`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
`
`Gree Exhibit 2009
`
`Supercell 0y v. Gree, Inc.
`PGR2020-00063
`
`Page 00001
`
`Gree Exhibit 2009
`Supercell Oy v. Gree, Inc.
`PGR2020-00063
`Page 00001
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`51341
`Federal Register/Vol. 83, No. 197/ Thursday, October 11, 2018/ Rules and Regulations
`
`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 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, 2013).
`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 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 fiom 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.
`Amendments to the Rules of Practice for
`
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`51342
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`
`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. LJ. 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 a1.,
`How Difi‘erent 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
`Difi‘erence: Convergence in Claim
`Construction Standards, 70 V and L.
`Rev. 1071, 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.). 45
`(2016) (available at https://ssm.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 (ND. 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); [DS
`Techs., Inc. v. Avigilon USA Corp., No.
`15—Cv—10385, 2017 WL 4248855, at *6
`(ED. 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
`
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`
`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 113R, PGR, and CBM
`proceedings 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 113R 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 Philli s and its progeny.
`Under the amen ed 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
`pro osed substitute claim.
`T e 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,
`1.6., 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 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—Flarsheirn 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 8'
`C0., 474 F.3d 1323, 1332 (Fed. Cir.
`2007) (noting that “validity construction
`
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`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 tri