Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 21221-21226 [2018-09821]
Download as PDF
<![CDATA[
21221
Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
Authority: 16 U.S.C. 4711; Department of
Homeland Security Delegation No. 0170.1,
para. II, (57).
amend 33 CFR part 151, subpart D, as
follows:
PART 151—VESSELS CARRYING OIL,
NOXIOUS LIQUID SUBSTANCES,
GARBAGE, MUNICIPAL OR
COMMERCIAL WASTE, AND BALLAST
WATER
1. The authority citation for part 151,
subpart D, is revised to read as follows:
■
§ 151.2015
Exemptions.
*
*
*
*
*
2. Amend § 151.2015 as follows:
a. In paragraph (c), after the text
‘‘(ballast water management (BWM)
requirements),’’ add the text ‘‘151.2060
(reporting)’’; and
■ b. Revise the fourth and sixth rows in
table 1 to § 151.2015 to read as follows:
■
■
TABLE 1 TO § 151.2015—TABLE OF 33 CFR 151.2015 SPECIFIC EXEMPTIONS FOR TYPES OF VESSELS
151.2025
(Management)
151.2060
(Reporting)
*
*
*
Vessel operates exclusively on voyages between ports
or places within a single COTP Zone.
*
Exempt ...............................
*
*
Exempt ...............................
Exempt.
*
*
*
Non-seagoing vessel ......................................................
*
Exempt ...............................
*
*
Applicable 1 ........................
Applicable 1.
*
1 Unless
*
*
*
*
*
*
*
operating exclusively on voyages between ports or places within a single COTP Zone.
§ 151.2060
[Amended]
3. Amend § 151.2060 as follows:
a. In paragraph (b), remove the words
‘‘Unless operating exclusively on
voyages between ports or places within
a single COTP Zone, the’’ and add, in
their place, the word ‘‘The’’; and
■ b. Remove paragraphs (e) and (f).
■
■
Dated: May 4, 2018.
J. G. Lantz,
Director of Commercial Regulations and
Standards.
[FR Doc. 2018–09877 Filed 5–8–18; 8:45 am]
BILLING CODE 9110–04–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
Comment Deadline Date: The
Office solicits comments from the
public on this proposed rulemaking.
Written comments must be received on
or before July 9, 2018 to ensure
consideration.
RIN 0651–AD16
Changes to the Claim Construction
Standard for Interpreting Claims in
Trial Proceedings Before the Patent
Trial and Appeal Board
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
The United States Patent and
Trademark Office (‘‘USPTO’’ or
‘‘Office’’) proposes changes to the claim
construction standard for interpreting
claims in inter partes review (‘‘IPR’’),
post-grant review (‘‘PGR’’), and the
SUMMARY:
17:09 May 08, 2018
Jkt 244001
Comments should be sent
by electronic mail message over the
internet addressed to: PTABNPR2018@
uspto.gov. Comments may also be sent
by electronic mail message over the
internet via the Federal eRulemaking
Portal at https://www.regulations.gov.
See the Federal eRulemaking Portal
website for additional instructions on
providing comments via the Federal
eRulemaking Portal. All comments
submitted directly to the USPTO or
provided on the Federal eRulemaking
ADDRESSES:
AGENCY:
VerDate Sep<11>2014
transitional program for covered
business method patents (‘‘CBM’’)
proceedings before the Patent Trial and
Appeal Board (‘‘PTAB’’ or ‘‘Board’’). In
particular, the Office proposes to
replace the broadest reasonable
interpretation (‘‘BRI’’) standard for
construing unexpired patent claims and
proposed claims in these trial
proceedings with a standard that is the
same as the standard applied in federal
district courts and International Trade
Commission (‘‘ITC’’) proceedings. The
Office also proposes to amend the rules
to add that the Office will consider any
prior claim construction determination
concerning a term of the involved claim
in a civil action, or an ITC proceeding,
that is timely made of record in an IPR,
PGR, or CBM proceeding.
DATES:
[Docket No. PTO–P–2018–0036]
amozie on DSK3GDR082PROD with PROPOSALS
*
151.2070
(Recordkeeping)
PO 00000
Frm 00034
Fmt 4702
Sfmt 4702
Portal should include the docket
number (PTO–P–2018–0036).
Comments may also be submitted by
postal mail addressed to: Mail Stop
Patent Board, Director of the United
States Patent and Trademark Office,
P.O. Box 1450, Alexandria, VA 22313–
1450, marked to the attention of ‘‘Vice
Chief Administrative Patent Judges
Michael Tierney or Jacqueline Wright
Bonilla, PTAB Notice of Proposed
Rulemaking 2018.’’
Although comments may be
submitted by postal mail, the Office
prefers to receive comments by
electronic mail message to more easily
share all comments with the public. The
Office prefers the comments to be
submitted in plain text, but also accepts
comments submitted in searchable
ADOBE® portable document format or
MICROSOFT WORD® format.
Comments not submitted electronically
should be submitted on paper in a
format that accommodates digital
scanning into ADOBE® portable
document format.
The comments will be available for
public inspection at the Patent Trial and
Appeal Board, located in Madison East,
Ninth Floor, 600 Dulany Street,
Alexandria, Virginia. Comments also
will be available for viewing via the
Office’s internet website, https://
go.usa.gov/xXXFW, and on the Federal
eRulemaking Portal. Because comments
will be made available for public
inspection, information that the
submitter does not desire to be made
public, such as address or phone
E:\FR\FM\09MYP1.SGM
09MYP1
21222
Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
number, should not be included in the
comments.
FOR FURTHER INFORMATION CONTACT:
Michael Tierney and Jacqueline Wright
Bonilla, Vice Chief Administrative
Patent Judges, by telephone at (571)
272–9797.
SUPPLEMENTARY INFORMATION:
amozie on DSK3GDR082PROD with PROPOSALS
Executive Summary
Purpose: This proposed rule would
amend the rules for IPR, PGR, and CBM
proceedings that implemented
provisions of the Leahy-Smith America
Invents Act (‘‘AIA’’) providing for trials
before the Office, by replacing the
current claim construction standard for
interpreting unexpired patent claims
and claims proposed in a motion to
amend, with an approach that is the
same as the standard used by Article III
federal courts following Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). This proposed rule also would
amend the rules to add that the Office
will consider any prior claim
construction determination concerning
a term of the involved claim in a civil
action, or an ITC proceeding, that is
timely made of record in an IPR, PGR,
or CBM proceeding.
Summary of Major Provisions: The
Office is using over five years of
historical data and user experiences to
further shape and improve PTAB trial
proceedings, particularly IPR, PGR, and
CBM proceedings. In this notice of
proposed rulemaking, the Office seeks
feedback and information in relation to
the Office’s proposed changes to the
claim construction standard used for
interpreting unexpired patent claims
and 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 trial proceedings.
Cuozzo Speed Techs., LLC v. Lee, 136 S.
Ct. 2131, 2144–46 (2016). Some parties
have expressed a desire that the Office
apply the same claim construction
standard used in federal district courts,
rather than the current standard of BRI.
As part of the Office’s continuing efforts
to improve the trial proceedings, it is
appropriate to revisit the claim
construction standard applied in AIA
trial proceedings involving unexpired
patent claims and claims proposed in a
motion to amend. The proposed changes
would replace the BRI standard with an
approach that would be consistent with
the claim construction standard used in
federal district courts. The proposed
changes also would be consistent with
the Office’s current approach for
interpreting claims in an expired patent.
See Wasica Fin. GmbH v. Cont’l Auto.
VerDate Sep<11>2014
17:09 May 08, 2018
Jkt 244001
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’’).
Costs and Benefits: This rulemaking is
not economically significant, and is not
significant, under Executive Order
12866 (Sept. 30, 1993), as amended by
Executive Order 13258 (Feb. 26, 2002)
and Executive Order 13422 (Jan. 18,
2007).
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 trials, including
IPR, PGR, CBM, and derivation
proceedings pursuant to 35 U.S.C. 135,
316 and 326 and AIA 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 structure 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
trial 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 the AIA trial 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 the
PO 00000
Frm 00035
Fmt 4702
Sfmt 4702
AIA trial proceedings that might be
beneficial. See Request for Comments,
79 FR at 36476–77.
Upon receiving comments from the
public and carefully reviewing the
comments, the Office published two
final rules in response to the public
feedback with respect to the AIA trial
proceedings. In the first final rule, the
Office changed the existing rules, among
other things, to: (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 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: (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).
Claim Construction Standard
The Board currently construes
unexpired patent claims and proposed
claims in AIA trial proceedings using
the BRI standard, as directed by 37 CFR
42.100(b), 42.200(b), and 42.300(b) (‘‘A
claim in an unexpired patent that will
not expire before a final written
decision is issued shall be given its
broadest reasonable construction in
light of the specification of the patent in
which it appears.’’). The BRI standard
differs from the standard used in federal
district 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.
However, although the BRI standard
is consistent with longstanding agency
practice, the fact that the Office uses a
claim construction standard that is
different from that used by federal
district courts and the ITC means that
decisions construing the same or similar
claims in those fora may be different
from those in AIA trial proceedings and
vice versa. Minimizing differences
between claim construction standards
used in the various fora could lead to
greater uniformity and predictability of
the patent grant. In addition, using the
E:\FR\FM\09MYP1.SGM
09MYP1
amozie on DSK3GDR082PROD with PROPOSALS
Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
same standard in the various fora could
help increase judicial efficiency overall.
One study found that 86.8% of patents
at issue in AIA trial proceedings also
have been the subject of litigation in the
federal courts. 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), https://ssrn.com/
abstract=2731002. Thus, the high
percentage of overlap between AIA trial
proceedings and district court litigation
favors using a claim construction
standard in AIA trials that is consistent
with the standard used by federal
district courts and the ITC.
Having AIA trial proceedings use the
same claim construction standard that is
applied in federal district courts and
ITC proceedings also addresses the
concern that potential unfairness could
result from using an arguably broader
standard in AIA trial proceedings.
According to some patent owners, the
same claim construction standard
should apply to both validity (or
patentability) determination and
infringement determination. Because
the BRI standard potentially reads on a
broader universe of prior art than does
the Phillips standard, a patent claim
could be found unpatentable in an AIA
trial 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 if it was sold after the patent’s
effective filing date, the same product
nevertheless could constitute
invalidating prior art if publicly sold
before the patent’s effective filing date.
The Office’s goal is to implement a
fair and balanced approach, providing
greater predictability and certainty in
the patent system. The Office has
carefully considered ‘‘the effect of [the
proposed] 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 must prescribe
regulations establishing and governing
IPR, PGR, and CBM proceedings and the
relationship of such review to other
proceedings, including civil actions to
invalidate a patent under 35 U.S.C.
282(b). 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 (AIA ‘‘is designed
to establish a more efficient and
VerDate Sep<11>2014
17:09 May 08, 2018
Jkt 244001
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. Network1 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
unnecessary 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 district
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 740–42.
In this notice of proposed rulemaking,
the Office proposes to change the
relevant 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 such claim
in a civil action to invalidate a patent
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 proposed change would
replace the BRI standard for construing
unexpired patent claims and proposed
claims in IPR, PGR, and CBM
proceedings with an approach that
follows the framework set forth in
Phillips.
Under the proposed approach, the
Office would construe patent claims and
proposed claims based on the record of
the IPR, PGR, or CBM proceeding,
taking into account the claim language
itself, specification, and prosecution
history pertaining to the patent. The
Office would apply the principles that
the Federal Circuit articulated in
Phillips and its progeny. 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
PO 00000
Frm 00036
Fmt 4702
Sfmt 4702
21223
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 1212–1313.
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. 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, consistent with Phillips
and its progeny, the doctrine of
construing claims to preserve their
validity would apply to AIA trials.
Phillips, 415 F.3d at 1327–28. As the
Federal Circuit recognized in Phillips,
however, this doctrine is ‘‘of limited
utility.’’ Id.
The Court has not applied that
doctrine broadly, and has ‘‘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 LiebelFlarsheim 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 should be used as
a last resort, not first principle’’).
The prosecution history taken into
account would be the prosecution
history that occurred previously at the
USPTO, including before an examiner
during examination, reissue,
E:\FR\FM\09MYP1.SGM
09MYP1
21224
Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
amozie on DSK3GDR082PROD with PROPOSALS
reexamination, IPR, PGR, and CBM
proceedings. This would 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
Company, 682 Fed. Appx. 895 (Fed. Cir.
2017)).
During an AIA trial proceeding, the
patent owner may file a motion to
amend an unexpired patent claim to
propose a reasonable number of
substitute claims, but the proposed
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’’). Among other
things, having the same claim
construction standard for both the
original patent claims and proposed
claims would reduce the potential for
inconsistency in the interpretation of
the same or similar claim terms.
In addition, the Office intends that
any proposed rule changes adopted in a
final rule would be applied to all
pending IPR, PGR, and CBM
proceedings before PTAB.
In light of the foregoing
considerations, the Office requests input
from the public on the proposed rule
changes in this notice of proposed
rulemaking and on how the Office
should implement the changes if
adopted.
Discussion of Specific Rules
Title 37 of the Code of Federal
Regulations, part 42, is proposed to be
amended as follows:
Sections 42.100, 42.200, and 42.300:
Each of §§ 42.100(b), 42.200(b), and
42.300(b) is proposed to be amended to
replace the first sentence with the
following: a claim of a patent, or a claim
proposed in a motion to amend, ‘‘shall
be construed using the same claim
construction standard that would be
used to construe such claim in a civil
action to invalidate a patent 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
VerDate Sep<11>2014
17:09 May 08, 2018
Jkt 244001
pertaining to the patent.’’ This proposed
revision would replace the BRI standard
for construing unexpired patent claims
and proposed claims during an IPR,
PGR, or CBM proceeding with a
standard that is the same as the standard
applied in federal district courts and
ITC proceedings. As discussed above,
the Office would apply the principles
that the Federal Circuit articulated in
Phillips and its progeny. The Office
would construe patent claims and
proposed claims based on the record of
the IPR, PGR, or CBM proceeding,
taking into account the claim language
itself, specification, and prosecution
history pertaining to the patent, as well
as relevant extrinsic evidence, all as in
prevailing jurisprudence of Article III
courts. The prosecution history taken
into account would be the prosecution
history that occurred previously in
proceedings at the USPTO prior to the
IPR, PGR, or CBM proceeding at issue,
including in another IPR, PGR, or CBM
proceeding, or before an examiner
during examination, reissue, and
reexamination.
The Office has considered using
different claim construction standards
for IPR, PGR, and CBM proceedings,
but, for consistency, the Office proposes
the same claim construction to be
applied in all IPR, PGR, and CBM
proceedings.
Each of §§ 42.100(b), 42.200(b), and
42.300(b) also is proposed to be
amended to add the sentence ‘‘Any
prior claim construction determination
concerning a term of the claim in a civil
action, or a proceeding before the
International Trade Commission, that is
timely made of record in the . . .
proceeding will be considered.’’ Under
this proposed provision, the Office
would consider any prior claim
construction determination in a civil
action or ITC proceeding if a federal
court or the ITC has construed a term of
the involved claim previously using the
same standard, and the claim
construction determination has been
timely made of record in the IPR, PGR,
or CBM proceeding.
Each of §§ 42.100(b), 42.200(b), and
42.300(b) further is proposed to be
amended to delete the second and third
sentences, eliminating the procedure for
requesting a district court-type claim
construction approach for a patent
expiring during an IPR, PGR, or CBM
proceeding. Such a procedure would
not be needed should the Office adopt
the same claim construction standard,
as proposed, for construing claims of
unexpired patents as well as for
construing claims of expired patents in
an IPR, PGR, or CBM proceeding.
PO 00000
Frm 00037
Fmt 4702
Sfmt 4702
Rulemaking Considerations
A. Administrative Procedure Act
(APA): This proposed rule would revise
the rules relating to Office trial practice
for IPR, PGR, and CBM proceedings.
The changes being proposed in this
notice of proposed rulemaking would
not change the substantive criteria of
patentability. These proposed changes
involve rules of agency procedure and
interpretation. See Perez v. Mortg.
Bankers Ass’n, 135 S. Ct. 1199, 1204
(2015) (Interpretive rules ‘‘advise the
public of the agency’s construction of
the statutes and rules which it
administers.’’ (citation and internal
quotation marks omitted)); Bachow
Commc’ns, Inc. v. F.C.C., 237 F.3d 683,
690 (D.C. Cir. 2001) (rules governing an
application process are procedural
under the Administrative Procedure
Act); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (rules
for handling appeals were procedural
where they did not change the
substantive requirements for reviewing
claims); Nat’l Org. of Veterans’
Advocates, Inc. v. Sec’y of Veterans
Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001) (rule that clarifies interpretation
of a statute is interpretive); JEM Broad.
Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir.
1994) (rules are not legislative because
they do not ‘‘foreclose effective
opportunity to make one’s case on the
merits’’).
Accordingly, prior notice and
opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or
(c) (or any other law). See Perez, 135 S.
Ct. at 1206 (Notice-and-comment
procedures are required neither when
an agency ‘‘issue[s] an initial
interpretive rule’’ nor ‘‘when it amends
or repeals that interpretive rule.’’);
Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336–37 (Fed. Cir. 2008) (stating
that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2)(B), do not require notice and
comment rulemaking for ‘‘interpretative
rules, general statements of policy, or
rules of agency organization, procedure,
or practice’’) (quoting 5 U.S.C.
553(b)(3)(A)).
The Office, nevertheless, is publishing
this proposed rule for comment to seek
the benefit of the public’s views on the
Office’s proposed changes to the claim
construction standard for reviewing
patent claims and proposed claims in
AIA trial proceedings before the Board.
B. Regulatory Flexibility Act: For the
reasons set forth herein, the Deputy
General Counsel for General Law of the
United States Patent and Trademark
Office has certified to the Chief Counsel
for Advocacy of the Small Business
Administration that changes proposed
E:\FR\FM\09MYP1.SGM
09MYP1
21225
amozie on DSK3GDR082PROD with PROPOSALS
Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
in this notice of proposed rulemaking
would not have a significant economic
impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
The changes proposed in this notice
of proposed rulemaking are to revise
certain trial practice procedures before
the Board. Any requirements resulting
from these proposed changes are of
minimal or no additional burden to
those practicing before the Board.
For the foregoing reasons, the
proposed changes in this notice of
proposed rulemaking would not have a
significant economic impact on a
substantial number of small entities.
C. Executive Order 12866 (Regulatory
Planning and Review): This rulemaking
has been determined to be not
significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving
Regulation and Regulatory Review): The
Office has complied with Executive
Order 13563. Specifically, the Office
has, to the extent feasible and
applicable: (1) Made a reasoned
determination that the benefits justify
the costs of the rule; (2) tailored the rule
to impose the least burden on society
consistent with obtaining the regulatory
objectives; (3) selected a regulatory
approach that maximizes net benefits;
(4) specified performance objectives; (5)
identified and assessed available
alternatives; (6) involved the public in
an open exchange of information and
perspectives among experts in relevant
disciplines, affected stakeholders in the
private sector and the public as a whole,
and provided on-line access to the
rulemaking docket; (7) attempted to
promote coordination, simplification,
and harmonization across government
agencies and identified goals designed
to promote innovation; (8) considered
approaches that reduce burdens and
maintain flexibility and freedom of
choice for the public; and (9) ensured
the objectivity of scientific and
technological information and
processes.
E. Executive Order 13771 (Reducing
Regulation and Controlling Regulatory
Costs): This proposed rule is not
expected to be an Executive Order
13771 regulatory action because this
proposed rule is not significant under
Executive Order 12866.
F. Executive Order 13132
(Federalism): This rulemaking does not
contain policies with federalism
implications sufficient to warrant
preparation of a Federalism Assessment
under Executive Order 13132 (Aug. 4,
1999).
G. Executive Order 13211 (Energy
Effects): This rulemaking is not a
significant energy action under
VerDate Sep<11>2014
17:09 May 08, 2018
Jkt 244001
Executive Order 13211 because this
rulemaking is not likely to have a
significant adverse effect on the supply,
distribution, or use of energy. Therefore,
a Statement of Energy Effects is not
required under Executive Order 13211
(May 18, 2001).
H. Executive Order 12988 (Civil
Justice Reform): This rulemaking meets
applicable standards to minimize
litigation, eliminate ambiguity, and
reduce burden as set forth in sections
3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection
of Children): This rulemaking does not
concern an environmental risk to health
or safety that may disproportionately
affect children under Executive Order
13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of
Private Property): This rulemaking will
not affect a taking of private property or
otherwise have taking implications
under Executive Order 12630 (Mar. 15,
1988).
K. Congressional Review Act: Under
the Congressional Review Act
provisions of the Small Business
Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to
issuing any final rule, the United States
Patent and Trademark Office will
submit a report containing the rule and
other required information to the United
States Senate, the United States House
of Representatives, and the Comptroller
General of the Government
Accountability Office. The changes in
this proposed rule are not expected to
result in an annual effect on the
economy of 100 million dollars or more,
a major increase in costs or prices, or
significant adverse effects on
competition, employment, investment,
productivity, innovation, or the ability
of United States-based enterprises to
compete with foreign-based enterprises
in domestic and export markets.
Therefore, this proposed rule is not a
‘‘major rule’’ as defined in 5 U.S.C.
804(2).
L. Unfunded Mandates Reform Act of
1995: The proposed changes set forth in
this rulemaking do not involve a Federal
intergovernmental mandate that will
result in the expenditure by State, local,
and tribal governments, in the aggregate,
of 100 million dollars (as adjusted) or
more in any one year, or a Federal
private sector mandate that will result
in the expenditure by the private sector
of 100 million dollars (as adjusted) or
more in any one year, and will not
significantly or uniquely affect small
governments. Therefore, no actions are
necessary under the provisions of the
Unfunded Mandates Reform Act of
1995. See 2 U.S.C. 1501 et seq.
PO 00000
Frm 00038
Fmt 4702
Sfmt 4702
M. National Environmental Policy
Act: This rulemaking will not have any
effect on the quality of the environment
and is thus categorically excluded from
review under the National
Environmental Policy Act of 1969. See
42 U.S.C. 4321 et seq.
N. National Technology Transfer and
Advancement Act: The requirements of
section 12(d) of the National
Technology Transfer and Advancement
Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does
not contain provisions which involve
the use of technical standards.
O. Paperwork Reduction Act: The
Paperwork Reduction Act of 1995 (44
U.S.C. 3501–3549) requires that the
Office consider the impact of paperwork
and other information collection
burdens imposed on the public. This
proposed rule involves information
collection requirements which are
subject to review by the Office of
Management and Budget (OMB) under
the Paperwork Reduction Act of 1995
(44 U.S.C. 3501–3549). This rulemaking
does not add any additional information
requirements or fees for parties before
the Board. Therefore, the Office is not
resubmitting information collection
packages to OMB for its review and
approval because the revisions in this
rulemaking do not materially change the
information collections approved under
OMB control number 0651–0069.
Notwithstanding any other provision
of law, no person is required to respond
to, nor shall any person be subject to, a
penalty for failure to comply with a
collection of information subject to the
requirements of the Paperwork
Reduction Act unless that collection of
information displays a currently valid
OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and
procedure, Inventions and patents.
For the reasons set forth in the
preamble, the Office proposes to amend
part 42 of title 37 of the Code of Federal
Regulations as follows:
PART 42—TRIAL PRACTICE BEFORE
THE PATENT TRIAL AND APPEAL
BOARD
1. The authority citation for 37 CFR
part 42 continues to read as follows:
■
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41,
135, 311, 312, 316, and 321–326; Public Law
112–29, 125 Stat. 284; and Pub. L. 112 274,
126 Stat. 2456.
2. Amend § 42.100 by revising
paragraph (b) to read as follows:
■
§ 42.100
*
E:\FR\FM\09MYP1.SGM
*
Procedure; pendency.
*
09MYP1
*
*
21226
Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
(b) In an inter partes review
proceeding, a claim of a patent, or a
claim proposed in a motion to amend
under § 42.121, shall be construed using
the same claim construction standard
that would be used to construe such
claim in a civil action to invalidate a
patent 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. Any prior claim construction
determination concerning a term of the
claim in a civil action, or a proceeding
before the International Trade
Commission, that is timely made of
record in the inter partes review
proceeding will be considered.
*
*
*
*
*
■ 3. Amend § 42.200 by revising
paragraph (b) to read as follows:
§ 42.200
Procedure; pendency.
*
*
*
*
*
(b) In a post-grant review proceeding,
a claim of a patent, or a claim proposed
in a motion to amend under § 42.221,
shall be construed using the same claim
construction standard that would be
used to construe such claim in a civil
action to invalidate a patent 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. Any prior claim
construction determination concerning
a term of the claim in a civil action, or
a proceeding before the International
Trade Commission, that is timely made
of record in the post-grant review
proceeding will be considered.
*
*
*
*
*
■ 4. Amend § 42.300 by revising
paragraph (b) to read as follows:
§ 42.300
Procedure; pendency.
amozie on DSK3GDR082PROD with PROPOSALS
*
*
*
*
*
(b) In a covered business method
patent review proceeding, a claim of a
patent, or a claim proposed in a motion
to amend under § 42.221, shall be
construed using the same claim
construction standard that would be
used to construe such claim in a civil
action to invalidate a patent 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. Any prior claim
construction determination concerning
a term of the claim in a civil action, or
a proceeding before the International
Trade Commission, that is timely made
VerDate Sep<11>2014
17:09 May 08, 2018
Jkt 244001
of record in the covered business
method patent review proceeding will
be considered.
*
*
*
*
*
Dated: May 3, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property andDirector of the United States
Patent and Trademark Office.
[FR Doc. 2018–09821 Filed 5–8–18; 8:45 am]
BILLING CODE 3510–16–P
ENVIRONMENTAL PROTECTION
AGENCY
40 CFR Part 52
[EPA–R08–OAR–2018–0055; FRL–9977—
44—Region 8]
Interstate Transport Prongs 1 and 2 for
the 2012 Fine Particulate Matter (PM2.5)
Standard for Colorado, Montana, North
Dakota, South Dakota and Wyoming
Environmental Protection
Agency (EPA).
ACTION: Proposed rule.
AGENCY:
The Environmental Protection
Agency (EPA) is proposing to approve
portions of State Implementation Plan
(SIP) submissions from Colorado,
Montana, North Dakota, South Dakota
and Wyoming addressing the Clean Air
Act (CAA or Act) interstate transport
SIP requirements for the 2012 annual
Fine Particulate Matter (PM2.5) National
Ambient Air Quality Standards
(NAAQS). These submissions address
the requirement that each SIP contain
adequate provisions prohibiting air
emissions that will have certain adverse
air quality effects in other states. The
EPA is proposing to approve portions of
these infrastructure SIPs for the
aforementioned states as containing
adequate provisions to ensure that air
emissions in the states will not
significantly contribute to
nonattainment or interfere with
maintenance of the 2012 annual PM2.5
NAAQS in any other state.
DATES: Comments must be received on
or before June 8, 2018.
ADDRESSES: Submit your comments,
identified by Docket ID No EPA–R08–
OAR–2018–0055 at https://
www.regulations.gov. Follow the online
instructions for submitting comments.
Once submitted, comments cannot be
edited or removed from
www.regulations.gov. The EPA may
publish any comment received to its
public docket. Do not submit
electronically any information you
consider to be Confidential Business
Information (CBI) or other information
SUMMARY:
PO 00000
Frm 00039
Fmt 4702
Sfmt 4702
whose disclosure is restricted by statute.
Multimedia submissions (audio, video,
etc.) must be accompanied by a written
comment. The written comment is
considered the official comment and
should include discussion of all points
you wish to make. The EPA will
generally not consider comments or
comment contents located outside of the
primary submission (i.e., on the web,
cloud, or other file sharing system). For
additional submission methods, the full
EPA public comment policy,
information about CBI or multimedia
submissions, and general guidance on
making effective comments, please visit
https://www2.epa.gov/dockets/
commenting-epa-dockets.
FOR FURTHER INFORMATION CONTACT:
Adam Clark, Air Program, U.S. EPA
Region 8, (303) 312–7104, clark.adam@
epa.gov.
SUPPLEMENTARY INFORMATION:
I. Background
On December 14, 2012, the EPA
revised the primary annual PM2.5
NAAQS to 12.0 micrograms per cubic
meter (mg/m3). See 78 FR 3086 (January
15, 2013). An area meets the standard if
the three-year average of its annual
average PM2.5 concentration (at each
monitoring site in the area) is less than
or equal to 12.0 mg/m3. The CAA
requires states to submit, within three
years after promulgation of a new or
revised standard, SIPs meeting the
applicable ‘‘infrastructure’’ elements of
sections 110(a)(1) and (2). One of these
applicable infrastructure elements, CAA
section 110(a)(2)(D)(i), requires SIPs to
contain ‘‘good neighbor’’ provisions to
prohibit certain adverse air quality
effects on neighboring states due to
interstate transport of pollution.
Section 110(a)(2)(D)(i) includes four
distinct components, commonly
referred to as ‘‘prongs,’’ that must be
addressed in infrastructure SIP
submissions. The first two prongs,
which are codified in section
110(a)(2)(D)(i)(I), are provisions that
prohibit any source or other type of
emissions activity in one state from
contributing significantly to
nonattainment of the NAAQS in another
state (prong 1) and from interfering with
maintenance of the NAAQS in another
state (prong 2). The third and fourth
prongs, which are codified in section
110(a)(2)(D)(i)(II), are provisions that
prohibit emissions activity in one state
from interfering with measures required
to prevent significant deterioration of air
quality in another state (prong 3) or
from interfering with measures to
protect visibility in another state (prong
4).
E:\FR\FM\09MYP1.SGM
09MYP1
]]>Agencies
[Federal Register Volume 83, Number 90 (Wednesday, May 9, 2018)]
[Proposed Rules]
[Pages 21221-21226]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-09821]
=======================================================================
-----------------------------------------------------------------------
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
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') proposes changes to 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 proposes to replace
the broadest reasonable interpretation (``BRI'') standard for
construing unexpired patent claims and proposed claims in these trial
proceedings with a standard that is the same as the standard applied in
federal district courts and International Trade Commission (``ITC'')
proceedings. The Office also proposes to amend the rules to add that
the Office will consider any prior claim construction determination
concerning a term of the involved claim in a civil action, or an ITC
proceeding, that is timely made of record in an IPR, PGR, or CBM
proceeding.
DATES: Comment Deadline Date: The Office solicits comments from the
public on this proposed rulemaking. Written comments must be received
on or before July 9, 2018 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
internet addressed to: [email protected]. Comments may also be sent
by electronic mail message over the internet via the Federal
eRulemaking Portal at https://www.regulations.gov. See the Federal
eRulemaking Portal website for additional instructions on providing
comments via the Federal eRulemaking Portal. All comments submitted
directly to the USPTO or provided on the Federal eRulemaking Portal
should include the docket number (PTO-P-2018-0036).
Comments may also be submitted by postal mail addressed to: Mail
Stop Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of ``Vice Chief Administrative Patent Judges Michael Tierney
or Jacqueline Wright Bonilla, PTAB Notice of Proposed Rulemaking
2018.''
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message to more easily
share all comments with the public. The Office prefers the comments to
be submitted in plain text, but also accepts comments submitted in
searchable ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that accommodates digital scanning into
ADOBE[supreg] portable document format.
The comments will be available for public inspection at the Patent
Trial and Appeal Board, located in Madison East, Ninth Floor, 600
Dulany Street, Alexandria, Virginia. Comments also will be available
for viewing via the Office's internet website, https://go.usa.gov/xXXFW, and on the Federal eRulemaking Portal. Because comments will be
made available for public inspection, information that the submitter
does not desire to be made public, such as address or phone
[[Page 21222]]
number, should not be included in the comments.
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 proposed rule would amend the rules for IPR, PGR, and
CBM proceedings that implemented provisions of the Leahy-Smith America
Invents Act (``AIA'') providing for trials before the Office, by
replacing the current claim construction standard for interpreting
unexpired patent claims and claims proposed in a motion to amend, with
an approach that is the same as the standard used by Article III
federal courts following Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc). This proposed rule also would amend the rules to
add that the Office will consider any prior claim construction
determination concerning a term of the involved claim in a civil
action, or an ITC proceeding, that is timely made of record in an IPR,
PGR, or CBM proceeding.
Summary of Major Provisions: The Office is using over five years of
historical data and user experiences to further shape and improve PTAB
trial proceedings, particularly IPR, PGR, and CBM proceedings. In this
notice of proposed rulemaking, the Office seeks feedback and
information in relation to the Office's proposed changes to the claim
construction standard used for interpreting unexpired patent claims and
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 trial proceedings. Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2144-46 (2016). Some parties have expressed a
desire that the Office apply the same claim construction standard used
in federal district courts, rather than the current standard of BRI. As
part of the Office's continuing efforts to improve the trial
proceedings, it is appropriate to revisit the claim construction
standard applied in AIA trial proceedings involving unexpired patent
claims and claims proposed in a motion to amend. The proposed changes
would replace the BRI standard with an approach that would be
consistent with the claim construction standard used in federal
district courts. The proposed changes also would be consistent with the
Office's current approach for interpreting claims in an expired patent.
See 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'').
Costs and Benefits: This rulemaking is not economically
significant, and is not significant, under Executive Order 12866 (Sept.
30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and
Executive Order 13422 (Jan. 18, 2007).
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 trials, including IPR, PGR,
CBM, and derivation proceedings pursuant to 35 U.S.C. 135, 316 and 326
and AIA 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 structure 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 trial 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 the AIA trial 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
the AIA trial proceedings that might be beneficial. See Request for
Comments, 79 FR at 36476-77.
Upon receiving comments from the public and carefully reviewing the
comments, the Office published two final rules in response to the
public feedback with respect to the AIA trial proceedings. In the first
final rule, the Office changed the existing rules, among other things,
to: (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 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: (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).
Claim Construction Standard
The Board currently construes unexpired patent claims and proposed
claims in AIA trial proceedings using the BRI standard, as directed by
37 CFR 42.100(b), 42.200(b), and 42.300(b) (``A claim in an unexpired
patent that will not expire before a final written decision is issued
shall be given its broadest reasonable construction in light of the
specification of the patent in which it appears.''). The BRI standard
differs from the standard used in federal district 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.
However, although the BRI standard is consistent with longstanding
agency practice, the fact that the Office uses a claim construction
standard that is different from that used by federal district courts
and the ITC means that decisions construing the same or similar claims
in those fora may be different from those in AIA trial proceedings and
vice versa. Minimizing differences between claim construction standards
used in the various fora could lead to greater uniformity and
predictability of the patent grant. In addition, using the
[[Page 21223]]
same standard in the various fora could help increase judicial
efficiency overall. One study found that 86.8% of patents at issue in
AIA trial proceedings also have been the subject of litigation in the
federal courts. 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), https://ssrn.com/abstract=2731002.
Thus, the high percentage of overlap between AIA trial proceedings and
district court litigation favors using a claim construction standard in
AIA trials that is consistent with the standard used by federal
district courts and the ITC.
Having AIA trial proceedings use the same claim construction
standard that is applied in federal district courts and ITC proceedings
also addresses the concern that potential unfairness could result from
using an arguably broader standard in AIA trial proceedings. According
to some patent owners, the same claim construction standard should
apply to both validity (or patentability) determination and
infringement determination. Because the BRI standard potentially reads
on a broader universe of prior art than does the Phillips standard, a
patent claim could be found unpatentable in an AIA trial 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 if it was sold after the
patent's effective filing date, the same product nevertheless could
constitute invalidating prior art if publicly sold before the patent's
effective filing date.
The Office's goal is to implement a fair and balanced approach,
providing greater predictability and certainty in the patent system.
The Office has carefully considered ``the effect of [the proposed]
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 must prescribe regulations establishing and governing IPR, PGR,
and CBM proceedings and the relationship of such review to other
proceedings, including civil actions to invalidate a patent under 35
U.S.C. 282(b). 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 (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 unnecessary 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 district
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 740-42.
In this notice of proposed rulemaking, the Office proposes to
change the relevant 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 such claim in a
civil action to invalidate a patent 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 proposed
change would replace the BRI standard for construing unexpired patent
claims and proposed claims in IPR, PGR, and CBM proceedings with an
approach that follows the framework set forth in Phillips.
Under the proposed approach, the Office would construe patent
claims and proposed claims based on the record of the IPR, PGR, or CBM
proceeding, taking into account the claim language itself,
specification, and prosecution history pertaining to the patent. The
Office would apply the principles that the Federal Circuit articulated
in Phillips and its progeny. 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 1212-1313. 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. 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, consistent with Phillips and its progeny, the
doctrine of construing claims to preserve their validity would apply to
AIA trials. Phillips, 415 F.3d at 1327-28. As the Federal Circuit
recognized in Phillips, however, this doctrine is ``of limited
utility.'' Id.
The Court has not applied that doctrine broadly, and has
``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 should be used as a
last resort, not first principle'').
The prosecution history taken into account would be the prosecution
history that occurred previously at the USPTO, including before an
examiner during examination, reissue,
[[Page 21224]]
reexamination, IPR, PGR, and CBM proceedings. This would 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 Company, 682
Fed. Appx. 895 (Fed. Cir. 2017)).
During an AIA trial proceeding, the patent owner may file a motion
to amend an unexpired patent claim to propose a reasonable number of
substitute claims, but the proposed 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''). Among other things, having the same
claim construction standard for both the original patent claims and
proposed claims would reduce the potential for inconsistency in the
interpretation of the same or similar claim terms.
In addition, the Office intends that any proposed rule changes
adopted in a final rule would be applied to all pending IPR, PGR, and
CBM proceedings before PTAB.
In light of the foregoing considerations, the Office requests input
from the public on the proposed rule changes in this notice of proposed
rulemaking and on how the Office should implement the changes if
adopted.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 42, is proposed
to be amended as follows:
Sections 42.100, 42.200, and 42.300: Each of Sec. Sec. 42.100(b),
42.200(b), and 42.300(b) is proposed to be amended to replace the first
sentence with the following: a claim of a patent, or a claim proposed
in a motion to amend, ``shall be construed using the same claim
construction standard that would be used to construe such claim in a
civil action to invalidate a patent 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 proposed
revision would replace the BRI standard for construing unexpired patent
claims and proposed claims during an IPR, PGR, or CBM proceeding with a
standard that is the same as the standard applied in federal district
courts and ITC proceedings. As discussed above, the Office would apply
the principles that the Federal Circuit articulated in Phillips and its
progeny. The Office would construe patent claims and proposed claims
based on the record of the IPR, PGR, or CBM proceeding, taking into
account the claim language itself, specification, and prosecution
history pertaining to the patent, as well as relevant extrinsic
evidence, all as in prevailing jurisprudence of Article III courts. The
prosecution history taken into account would be the prosecution history
that occurred previously in proceedings at the USPTO prior to the IPR,
PGR, or CBM proceeding at issue, including in another IPR, PGR, or CBM
proceeding, or before an examiner during examination, reissue, and
reexamination.
The Office has considered using different claim construction
standards for IPR, PGR, and CBM proceedings, but, for consistency, the
Office proposes the same claim construction to be applied in all IPR,
PGR, and CBM proceedings.
Each of Sec. Sec. 42.100(b), 42.200(b), and 42.300(b) also is
proposed to be amended to add the sentence ``Any prior claim
construction determination concerning a term of the claim in a civil
action, or a proceeding before the International Trade Commission, that
is timely made of record in the . . . proceeding will be considered.''
Under this proposed provision, the Office would consider any prior
claim construction determination in a civil action or ITC proceeding if
a federal court or the ITC has construed a term of the involved claim
previously using the same standard, and the claim construction
determination has been timely made of record in the IPR, PGR, or CBM
proceeding.
Each of Sec. Sec. 42.100(b), 42.200(b), and 42.300(b) further is
proposed to be amended to delete the second and third sentences,
eliminating the procedure for requesting a district court-type claim
construction approach for a patent expiring during an IPR, PGR, or CBM
proceeding. Such a procedure would not be needed should the Office
adopt the same claim construction standard, as proposed, for construing
claims of unexpired patents as well as for construing claims of expired
patents in an IPR, PGR, or CBM proceeding.
Rulemaking Considerations
A. Administrative Procedure Act (APA): This proposed rule would
revise the rules relating to Office trial practice for IPR, PGR, and
CBM proceedings. The changes being proposed in this notice of proposed
rulemaking would not change the substantive criteria of patentability.
These proposed changes involve rules of agency procedure and
interpretation. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199,
1204 (2015) (Interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers.''
(citation and internal quotation marks omitted)); Bachow Commc'ns, Inc.
v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an
application process are procedural under the Administrative Procedure
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (rules for handling appeals were procedural where they did not
change the substantive requirements for reviewing claims); Nat'l Org.
of Veterans' Advocates, Inc. v. Sec'y of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a
statute is interpretive); JEM Broad. Co. v. F.C.C., 22 F.3d 320, 328
(D.C. Cir. 1994) (rules are not legislative because they do not
``foreclose effective opportunity to make one's case on the merits'').
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Perez, 135 S. Ct. at 1206 (Notice-and-comment procedures are required
neither when an agency ``issue[s] an initial interpretive rule'' nor
``when it amends or repeals that interpretive rule.''); Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5
U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice and
comment rulemaking for ``interpretative rules, general statements of
policy, or rules of agency organization, procedure, or practice'')
(quoting 5 U.S.C. 553(b)(3)(A)).
The Office, nevertheless, is publishing this proposed rule for
comment to seek the benefit of the public's views on the Office's
proposed changes to the claim construction standard for reviewing
patent claims and proposed claims in AIA trial proceedings before the
Board.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Deputy General Counsel for General Law of the United States Patent
and Trademark Office has certified to the Chief Counsel for Advocacy of
the Small Business Administration that changes proposed
[[Page 21225]]
in this notice of proposed rulemaking would not have a significant
economic impact on a substantial number of small entities. See 5 U.S.C.
605(b).
The changes proposed in this notice of proposed rulemaking are to
revise certain trial practice procedures before the Board. Any
requirements resulting from these proposed changes are of minimal or no
additional burden to those practicing before the Board.
For the foregoing reasons, the proposed changes in this notice of
proposed rulemaking would not have a significant economic impact on a
substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13771 (Reducing Regulation and Controlling
Regulatory Costs): This proposed rule is not expected to be an
Executive Order 13771 regulatory action because this proposed rule is
not significant under Executive Order 12866.
F. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
proposed rule are not expected to result in an annual effect on the
economy of 100 million dollars or more, a major increase in costs or
prices, or significant adverse effects on competition, employment,
investment, productivity, innovation, or the ability of United States-
based enterprises to compete with foreign-based enterprises in domestic
and export markets. Therefore, this proposed rule is not a ``major
rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The proposed changes set
forth in this rulemaking do not involve a Federal intergovernmental
mandate that will result in the expenditure by State, local, and tribal
governments, in the aggregate, of 100 million dollars (as adjusted) or
more in any one year, or a Federal private sector mandate that will
result in the expenditure by the private sector of 100 million dollars
(as adjusted) or more in any one year, and will not significantly or
uniquely affect small governments. Therefore, no actions are necessary
under the provisions of the Unfunded Mandates Reform Act of 1995. See 2
U.S.C. 1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rule involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
This rulemaking does not add any additional information requirements or
fees for parties before the Board. Therefore, the Office is not
resubmitting information collection packages to OMB for its review and
approval because the revisions in this rulemaking do not materially
change the information collections approved under OMB control number
0651-0069.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to, a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents.
For the reasons set forth in the preamble, the Office proposes to
amend part 42 of title 37 of the Code of Federal Regulations as
follows:
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312,
316, and 321-326; Public Law 112-29, 125 Stat. 284; and Pub. L. 112
274, 126 Stat. 2456.
0
2. Amend Sec. 42.100 by revising paragraph (b) to read as follows:
Sec. 42.100 Procedure; pendency.
* * * * *
[[Page 21226]]
(b) In an inter partes review proceeding, a claim of a patent, or a
claim proposed in a motion to amend under Sec. 42.121, shall be
construed using the same claim construction standard that would be used
to construe such claim in a civil action to invalidate a patent 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. Any prior claim construction determination concerning a term of
the claim in a civil action, or a proceeding before the International
Trade Commission, that is timely made of record in the inter partes
review proceeding will be considered.
* * * * *
0
3. Amend Sec. 42.200 by revising paragraph (b) to read as follows:
Sec. 42.200 Procedure; pendency.
* * * * *
(b) In a post-grant review proceeding, a claim of a patent, or a
claim proposed in a motion to amend under Sec. 42.221, shall be
construed using the same claim construction standard that would be used
to construe such claim in a civil action to invalidate a patent 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. Any prior claim construction determination concerning a term of
the claim in a civil action, or a proceeding before the International
Trade Commission, that is timely made of record in the post-grant
review proceeding will be considered.
* * * * *
0
4. Amend Sec. 42.300 by revising paragraph (b) to read as follows:
Sec. 42.300 Procedure; pendency.
* * * * *
(b) In a covered business method patent review proceeding, a claim
of a patent, or a claim proposed in a motion to amend under Sec.
42.221, shall be construed using the same claim construction standard
that would be used to construe such claim in a civil action to
invalidate a patent 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. Any prior claim
construction determination concerning a term of the claim in a civil
action, or a proceeding before the International Trade Commission, that
is timely made of record in the covered business method patent review
proceeding will be considered.
* * * * *
Dated: May 3, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property andDirector of
the United States Patent and Trademark Office.
[FR Doc. 2018-09821 Filed 5-8-18; 8:45 am]
BILLING CODE 3510-16-P
