AUTHENTICATED
`US, GOVERNMENT,
`INFORMATION,
`GPa,
`
`51340
`Federal Register/Vol. 83, No. 197/Thursday, October 11, 2018/Rules and Regulations
`
`contact the person listed in the FOR
`FURTHER INFORMATION CONTACTsection
`above.
`
`E, Unfunded Mandates Reform Act
`The Unfunded Mandates Reform Act
`of 1995 (2 U.S.C. 1531-1538) requires
`Federal agenciesto 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. Thoughthis rule
`will not result in such an expenditure,
`wedodiscuss the effects of this rule
`elsewherein this preamble.
`F, Environment
`
`Wehave 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. 4321-4370f), and have
`determinedthat this action is one ofa
`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
`Amendmentrights ofprotesters.
`Protesters are asked to contact the
`person listed in the FOR FURTHER
`INFORMATION CONTACTsection 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 165
`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
`AREASAND LIMITED ACCESS AREAS
`
`m 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
`
`mw 2. Add new § 165.T08—0937 to read as
`follows:
`
`§165.T08-0937 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 October10,
`2018 through 6 p.m. on October17,
`2018, or until the underwater
`transmission line survey work is
`finished, whicheveroccursearlier.
`(c) Enforcementperiods. This section
`will be enforced each day during the
`effective period from 8 a.m. through
`noon, and from 1 p.m. through 6 p.m.
`A safety vessel will coordinate all vessel
`traffic during the enforcementperiods.
`(d) Regulations. (1) In accordance
`with the general regulations in § 165.801
`of this part, entry into this areais
`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 controlof
`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 ora
`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
`COTPorthe 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, 2018.
`M.B, Zamperini,
`Captain, U.S. Coast Guard, Captain ofthe
`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-AD16
`
`Changesto the Claim Construction
`Standardfor Interpreting Claimsin
`Trial Proceedings Before the Patent
`Trial and Appeal Board
`AGENCY: United States Patent and
`Trademark Office, Departmentof
`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 amendstherules to add that any
`prior claim construction determination
`concerning a term ofthe 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 changesin this
`final rule take effect on November13,
`2018.
`Applicability Date: This ruleis
`effective on November13, 2018 and
`applies to all IPR, PGR and CBM
`petitions filed on orafter the effective
`date.
`FOR FURTHER INFORMATION CONTACT:
`Michael Tierney and Jacqueline Wright
`Bonilla, Vice Chief Administrative
`Patent Judges, by telephoneat (571)
`272-9797.
`SUPPLEMENTARYINFORMATION:
`
`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”) providingfortrials
`
`Gree Exhibit 2009
`Supercell Oy 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
`
`the Office implemented rules to govern
`For example, major bar associations,
`before the Office, by replacing the BRI
`Office practice for AIA proceedings,
`industry groups, patent practitioners,
`standardfor interpreting unexpired
`legal professors and scholars, and
`patent claims and substitute claims
`including IPR, PGR, CBM,and
`individuals all supported the change.
`proposedin a motion to amend with the
`derivation proceedings pursuant to 35
`same claim construction standard that
`The commentators also provided
`U.S.C. 135, 316 and 326 and AIA sec.
`would be used to construe the claim in
`18(d)(2). See Rules of Practice for Trials
`helpful insights and suggested revisions,
`which have been considered in
`Before the Patent Trial and Appeal
`a civil action under 35 U.S.C. 282(b).
`developing this final rule. While there
`Therule adopts the same claim
`Board andJudicial Review of Patent
`was broad support expressed for using
`construction standard used by Article III
`Trial and Appeal Board Decisions, 77
`the federal court standard set forth in
`FR 48612 (Aug. 14, 2012); Changes to
`federal courts and the ITC, both of
`Implement Inter Partes Review
`the proposed rule, some commentators
`which follow Phillips v. AWH Corp.,
`indicated that they were opposedto the
`Proceedings, Post-Grant Review
`415 F.3d 1303 (Fed. Cir. 2005) (en banc),
`Proceedings, and Transitional Program
`change. The Office appreciates the
`and its progeny. Underthefinal rule,
`for Covered Business Method Patents,
`thoughtful comments representing a
`the PTAB will apply in an AIA
`diverse set of views from the various
`proceeding the same standard applied
`77 FR 48680 (Aug. 14, 2012);
`Transitional Program for Covered
`public stakeholder communities. Upon
`in federal courts to construe patent
`Business Method Patents—Definitions
`claims. This final rule also amendsthe
`careful consideration of the public
`of Covered Business Method Patent and
`comments, taking into accountthe effect
`Tules to add a newprovision which
`Technological Invention, 77 FR 48734
`of the rule changes on the economy,the
`states that any prior claim construction
`determination in a civil action or
`integrity of the patent system, the
`(Aug. 14, 2012). Additionally, the Office
`published a Patent Trial Practice Guide
`proceedingbefore the ITC regarding a
`efficient administration of the Office,
`to advise the public on the general
`andtheability of the Office to timely
`term of the claim in an IPR, PGR,or
`framework of the regulations, including
`complete instituted proceedings, the
`CBMproceeding will be consideredif
`Office adopts the proposed rule changes
`that determination is timely filed in the
`the procedure and times for taking
`action in each of the new proceedings.
`(with minor deviations in the rule
`record of the IPR, PRG or CBM
`See Office Patent Trial Practice Guide,
`proceeding.
`language, as discussed below). Any
`Summary of Major Provisions: The
`77 FR 48756 (Aug. 14, 2012).
`deviations from the proposedrule are
`Previously, in an effort to gauge the
`Office is using almost six years of
`based upona logical outgrowth of the
`comments received.
`effectiveness of the rules governing AIA
`historical data, user experiences, and
`stakeholder feedback to further shape
`proceedings, the Office led a nationwide
`In particular, this final rule fully
`and improve PTAB proceedings,
`listening tour in April and May of 2014.
`adopts the federal court claim
`During the listening tour, the Office
`particularly IPR, PGR, and CBM
`construction standard, in other words,
`the claim construction standardthatis
`solicited feedback on how to make AIA
`proceedings[‘‘AIA proceedings’’). As
`used to construethe claim inacivil
`part of the Office’s continuing efforts to
`proceedings more transparent and
`improve AIA proceedings, the Office
`effective by adjusting the rules and
`action under 35 U.S.C. 282(b), which is
`now changesthe claim construction
`articulated in Phillips and its progeny.
`guidanceto the public where necessary.
`This rule states that the PTAB in an AIA
`standard applied in AIA proceedings
`To elicit even more input, in June of
`involving unexpired patent claims and
`proceedingwill apply the same
`2014, the Office published a Requestfor
`substitute claims proposed in a motion
`standard applied in federal courts to
`Comments in the Federal Register and,
`to amend. The Supreme Courtof the
`construe patent claims. The claim
`at public request, extended the period
`United States has endorsed the Office’s
`for receiving comments to October16,
`construction standard adoptedin this
`final rule also is consistent with the
`ability to choose an approachto claim
`2014. See Request for Comments on
`same standard that the Office has
`construction for AIA proceedings.
`Trial Proceedings Under the America
`Invents Act Before the Patent Trial and
`Cuozzo Speed Techs., LLC v. Lee, 136 S.
`applied in interpreting claims of expired
`patents and soon-to-be expired patents.
`Appeal Board, 79 FR 36474 (June 27,
`Ct. 2131, 2144-46 (2016) (‘That [the
`appropriate claim construction standard
`See, e.g., Wasica Fin. GmbH v. Cont’]
`2014) (“Request for Comments”). The
`Auto. Sys., Inc., 853 F.3d 1272, 1279
`for AIA proceedings] is a question that
`Request for Comments asked seventeen
`Congressleft to the particular expertise
`questions on ten broad topics, including
`(Fed. Cir. 2017) (noting that ‘‘[t]he Board
`a general catchall question, to gather
`of the Patent Office.”’).
`construes claims of an expired patent in
`In the notice of proposed rulemaking,
`public feedback on any changes to AIA
`accordance with Phillips.
`.
`. [and]
`the Office sought comments on the
`proceedings that might be beneficial.
`{uJnderthat standard, words of a claim
`Office’s proposed changesto the claim
`See Request for Comments, 79 FR at
`are generally given their ordinary and
`construction standard usedfor
`36476—77. At least one question was
`customary meaning”). This final rule
`directed to the claim construction
`also revises the rules to add that the
`interpreting unexpired patent claims
`standard.
`and substitute claims proposed in a
`Office will consider any prior claim
`motion to amend. Changesto the Claim
`Upon receiving comments from the
`construction determination concerning
`public and carefully reviewing the
`Construction Standardfor Interpreting
`a term of the claim that has been made
`Claimsin Trial Proceeding Before the
`comments, the Office published two
`in a civil action, or a proceeding before
`Patent Trial and Appeal Board, 83 FR
`final rules in responseto the public
`the ITC,if that prior claim construction
`feedback on this request for comments.
`21221 (May9, 2018).
`is timely madeof record in an AIA
`The Office received a total of 374
`In thefirst final rule, the Office changed
`proceeding.
`comments, including 297 comments
`the existing rules to, among other
`Costs and Benefits: This final rule is
`from individuals, 45 comments from
`things: (1) Increase the page limit for
`significant under Executive Order 12866
`associations, 1 comment from a law
`patent owner’s motion to amend by ten
`(Sept. 30, 1993).
`pages and allow a claims appendix to be
`firm, and 31 comments from
`Background
`corporations. The majority of the
`filed with the motion; and (2) increase
`comments were supportive of changing
`On September 16, 2011, the AIA was
`the page limit for petitioner’s reply to
`patent owner’s responsebyten pages.
`the claim construction standard along
`enacted into law (Pub. L. 112-29, 125
`Amendmentsto the Rules of Practice for
`Stat. 284 (2011)), and within one year,
`the lines set forth in the proposedrule.
`
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`51342
`Federal Register/Vol. 83, No. 197/Thursday, October 11, 2018/Rules and Regulations
`
`Trials Before the Patent Trial and
`Appeal Board, 80 FR 28561 (May 19,
`2015). In the secondfinalrule, the
`Office changed the existing rulesto,
`amongotherthings: (1) Allow new
`testimonial evidence to be submitted
`with a patent owner’s preliminary
`response;(2) allow a claim construction
`approachthat 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 countlimits for major
`briefing; and (4) add a Rule 11-type
`certification for papers filed in a
`proceeding. Amendmentsto 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 April1,
`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 November18, 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 commentperiod came when
`few Federal Circuit decisions had been
`issued, and there had been nodecisions
`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
`comparedto 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 standardforall
`patents challenged in AIA proceedings.
`Many of the comments are based on
`case law and data that was notavailable
`when the commentsto the last rule
`package werereceived 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 ofPTAB Claim
`Construction Decisions: Aspiring to
`Consistency and Predictability, 32
`Berkeley Tech. LJ. 315, 355 (2018) (the
`application of a different standard may
`encouragea losing party to attempt a
`secondbite at the apple, resulting in a
`
`waste of the parties’ and judicial
`resources alike); Kevin Greenleaf et al.,
`HowDifferent 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 (prospectof differing
`claim constructions for same claim term
`is troubling and these differences can
`determine the outcomeof a case); Laura
`E. Dolbow, A Distinction without a
`Difference: 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
`proposedsubstitute 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 standardis
`consistent with longstanding agency
`practice for patents in examination, the
`fact that the Office uses a claim
`construction standard in AIA
`proceedingsthat is different from that
`used by federal courts and the ITC
`means that decisions construing the
`sameor 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,
`improvingthe 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 hitps://ssrn.com/
`abstract=2731002). The high percentage
`of overlap between AIA proceedings
`and district court litigation favors using
`a claim construction standard in AIA
`proceedingsthat is the sameas the
`standard used by federal courts and the
`ITC. Thatis, the scope of an issued
`patent should not depend on the
`
`happenstance of which court or
`governmental agency interpretsit, 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 standardsin interpreting claims.
`See, e.g., Automated Packaging Sys.,
`Inc. v. Free Flow PackagingInt'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 submissionsare 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
`standardthat 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
`standardpotentially 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 accountof claim
`scope that the patent owner would not
`be able to assert in an infringement
`proceeding. For example, evenif 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 productnevertheless 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 sameclaim termis troubling,
`especially when claim construction
`takes place at the sametimein parallel
`district court proceedings and USPTO
`proceedings. Greenleafat 3.
`The Office’s goal is to implementa
`balanced approach,providing greater
`predictability and certainty in the patent
`
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`51343
`Federal Register/Vol. 83, No. 197/Thursday, October 11, 2018/Rules and Regulations
`
`F.3d at 1312-14. The ‘‘wordsof a claim
`construing the claim in accordance with
`system. The Office has carefully
`considered the submitted comments in
`the ordinary and customary meaning of
`are generally given their ordinary and
`customary meaning,” whichis “‘the
`such claim as understood by one of
`view of“the effect of [the] regulation on
`ordinary skill in the art and the
`meaning that the term would have to a
`the economy,the integrity of the patent
`prosecution history pertaining to the
`system,the efficient administration of
`personof ordinary skill in the art in
`patent. This rule reflects that the PTAB
`question at the timeof the invention,
`the Office, and the ability of the Office
`in an AJA proceeding will apply the
`ie., as of the effective filing date of the
`to complete timely the proceedings in
`samestandard applied in federal courts
`promulgating regulations.” 35 U.S.C.
`patent application.” Id. at 1312-13. The
`to construe patent claims. This change
`specification is “the single best guide to
`316(b) and 326(b). Under 35 U.S.C.
`replaces the BRI standard for construing
`the meaning ofa disputed term and...
`316(a)(4) and 326(a)(4), the Office shall
`unexpired patent claims and proposed
`prescribe regulations establishing and
`acts as a dictionary whenit expressly
`defines terms used in the claims or
`substitute claims in IPR, PGR, and CBM
`governing IPR, PGR, and CBM
`proceedings with the federal court claim
`proceedings and therelationship of
`whenit defines terms by implication.”
`construction standard, whichis
`such reviewsto other proceedings,
`Id. at 1321 (internal quotation marks
`articulated in Phillips and its progeny.
`omitted). Although the prosecution
`includingcivil actions under 35 U.S.C.
`Under the amendedrules as adopted
`history “‘often lacks the clarity of the
`282(b). Under35 U.S.C. 316(a)(2) and
`in this final rule, the Office will
`326(a)(2), the Office must prescribe
`specification and thusis less useful for
`construe patent claims and proposed
`claim construction purposes,”it is
`regulations “setting forth the standards
`substitute claims in an IPR, PGR,or
`another source of intrinsic evidence that
`for the showingof sufficient groundsto
`CBMproceedingbytaking into account
`institute a review.” Congress intended
`can “inform the meaningof the claim
`the claim languageitself, the
`language by demonstrating how the
`these administrative trial proceedings to
`specification, the prosecution history of
`inventor understood the invention and
`provide “quick and cost effective
`the patent, and extrinsic evidence,
`whetherthe inventor limited the
`alternatives” to litigation in the courts.
`amongotherthings, as briefed by the
`invention in the course of prosecution,
`H.R. Rep. No. 112 — 98, pt. 1, at 48
`parties. Having the same claim
`(2011), as reprinted in 2011
`making the claim scope narrowerthan
`construction standard for both the
`it would otherwise be.” Id. at 1317.
`U.S.C.C.A.N. 67, 78; see also id. at 40
`original patent claims and proposed
`Extrinsic evidence, such as expert
`(“[The AIA] is designedto establish a
`substitute claims will reduce the
`moreefficient and streamline patent
`testimonyanddictionaries, may be
`potential for inconsistency in the
`system that will improve patent quality
`useful in educating the court regarding
`interpretation of the sameor similar
`the field of the invention or helping
`and limit unnecessary and
`claim terms. Additionally, using the
`counterproductivelitigation costs.”).
`determine what a person of ordinary
`federal court claim construction
`skill in the art would understand claim
`The claim construction standard could
`standard is appropriate because, among
`be outcome determinative. PPC
`terms to mean.Id. at 1318-19. However,
`other things, amendments proposed in
`Broadband,Inc. v. Corning Optical
`extrinsic evidence in general is viewed
`AIA proceedings are required to be
`as less reliable than intrinsic evidence.
`Comm’ns RF, LLC, 815 F.3d 734, 740—
`narrowing,are limited to a reasonable
`Id.
`42 (Fed. Cir. 2016) (noting that‘‘[t]his
`numberof substitute claims, and are
`case hinges on the claim construction
`Additionally, to the extent that federal
`required to address patentability
`standard applied—a scenario likely to
`courts and the ITC apply the doctrine of
`challenges asserted against the original
`arise with frequency’’); see also
`construing claims to preserve their
`patent claims. Using the same claim
`RembrandtWireless Techs., LP v.
`validity as described in Phillips, the
`construction standard for interpreting
`Samsung Elecs. Co., 853 F.3d 1370,
`Office will apply this doctrine in those
`both the original and amendedclaims
`1377 (Fed. Cir. 2017) (noting that “‘the
`rare circumstances in AIA proceedings.
`also avoids the potential of added
`Board in IPR proceedings operates
`Phillips, 415 F.3d at 1327-28. As the
`complexity and inconsistencies between
`undera broader claim construction
`Federal Circuit recognized in Phillips,
`PTABandfederal court proceedings,
`standard than the federal courts”’);
`this doctrineis ‘‘of limited utility.” Id.
`andthis allows, amongotherthings, the
`Google LLC v. Network-1 Techs., Inc.,
`at 1328. Federal courts have not applied
`patent ownerto understand the scope of
`No. 2016-2509, 2018 WL 1468370, at *5
`that doctrine broadly and have
`the claims and more effectivelyfile
`(Fed. Cir. Mar. 26, 2018)
`“certainly not endorsed a regime in
`motions to amend. Additionally, having
`(nonprecedential) (holding that “[iln
`whichvalidity analysis is a regular
`the sameconstruction will reduce the
`order to be found reasonable, it is not
`componentof claim construction.” Id.at
`potential for situations where a claim
`necessary that a claim be givenits
`1327. The doctrine of construing claims
`term of an original patent claim is
`correct construction under the
`to preserve their validity has been
`construed one way underthe federal
`frameworklaid out in Phillips.”). Using
`limited to cases in which “the court
`court standard and yet the very same or
`the same claim construction standard as
`concludes, after applyingall the
`similar term is construed a different way
`the standard applied in federal courts
`available tools of claim construction,
`under BRI whereit appears in a
`would “seek out the correct
`that the claim is still ambiguous.” Id.
`proposedsubstitute claim.
`construction—the construction that
`(quoting Liebel-Flarsheim Co.v.
`The Office will apply the standard
`most accurately delineates the scope of
`Medrad,Inc., 358 F.3d 898, 911 (Fed.
`used in federal courts, in other words,
`the claim invention—underthe
`the claim construction standard that
`Cir. 2004)). Moreover, the Federal
`framework laid out in Phillips.” PPC
`would be used to construe the claim in
`Circuit “repeatedly and consistently has
`Broadband,815 F.3d at 740.
`recognized that courts may not redraft
`a civil action under 35 U.S.C. 282(b),
`claims, whether to make them operable
`In this final rule, the Office revises the
`whichis articulated in Phillips. This
`tule reflects that the PTAB in an AIA
`or to sustain their validity.” Rembrandt
`rules to provide that a patent claim,or
`a claim proposed in a motion to amend,
`Data Techs., LP v. AOL, LLC, 641 F.3d
`proceeding will apply the same
`shall be construed using the same claim
`1331, 1339 (Fed. Cir. 2011); see also
`standard applied in federal courts to
`construction standard that would be
`MBOLabs., Inc. v. Becton, Dickinson &
`construe patent claims. For example,
`used to construe the claim in a civil
`claim construction begins with the
`Co., 474 F.3d 1323, 1332 (Fed.Cir.
`action under 35 U.S.C. 282(b), including
`languageof the claims. Phillips, 415
`2007) (noting that ‘validity construction
`
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`
`should be usedasa lastresort, notfirst
`principle”’).
`Whenconstruing claims in IPR, PGR,
`and CBM proceedings, the Office will
`take into accountthe 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 madeby 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 examinerin a related
`application where relevant (Trading
`Technologies Intern., Inc. v. Open E Cry,
`LLC, 728 F.3d 1309 (Fed. Cir. 2013)) and
`any argument madeon appealof 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
`ownermayfile a motion to amend an
`unexpired patent to propose a
`reasonable numberof substitute claims,
`but the proposed substitute claims “may
`not enlarge the scopeof 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 amendmentthatit
`believes is sufficiently narrower than
`the challenged claim to overcome the
`groundsof unpatentability upon which
`the IPR wasinstituted’’). As discussed
`above, and amongotherthings, having
`the sameclaim construction standard
`for both the original patent claims and
`proposed substitute claims will reduce
`the potential for inconsistency in the
`interpretation of the sameor similar
`claim terms.
`The Office does not expect that this
`tule will result in direct costs to
`applicable entities. The Office’s
`understandingis informed partly by the
`PTAB’s experience in applying Phillips
`in some AIAtrials (as noted herein,
`PTABhasused Phillips for AIA trials
`concerning expired patents since 2012
`andfor AIA trials concerning soon-to-
`be-expired patents since 2016). In the
`PTABproceedingsthat are currently
`conducted using the Phillips standard,
`PTABapplies the same procedures—
`including the same page limits and
`
`other briefing requirements—asin the
`PTABproceedings that use the BRI
`standard.In other words, the PTAB
`currently uses the sameregulations,
`procedures, and guidancefor both types
`of AIAtrials: 7.e., for both the AIA trials
`that use the BRI standard as well as
`those AIAtrials (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,
`includingat the following page where
`USPTOhas