83 FR 21221 - Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board
DEPARTMENT OF COMMERCE
Patent and Trademark Office Federal Register Volume 83, Issue 90 (May 9, 2018)
Patent and Trademark Office
Federal Register Volume 83, Issue 90 (May 9, 2018)
| Page Range | 21221-21226 | |
| FR Document | 2018-09821 |
[Federal Register Volume 83, Number 90 (Wednesday, May 9, 2018)] [Proposed Rules] [Pages 21221-21226] From the Federal Register Online [www.thefederalregister.org] [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 http://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
![Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules 21221
amend 33 CFR part 151, subpart D, as Authority: 16 U.S.C. 4711; Department of § 151.2015 Exemptions.
follows: Homeland Security Delegation No. 0170.1, * * * * *
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PART 151—VESSELS CARRYING OIL,
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GARBAGE, MUNICIPAL OR ■ a. In paragraph (c), after the text
COMMERCIAL WASTE, AND BALLAST ‘‘(ballast water management (BWM)
WATER requirements),’’ add the text ‘‘151.2060
(reporting)’’; and
■ 1. The authority citation for part 151, ■ b. Revise the fourth and sixth rows in
subpart D, is revised to read as follows: 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 151.2060 151.2070
(Management) (Reporting) (Recordkeeping)
* * * * * * *
Vessel operates exclusively on voyages between ports Exempt ............................... Exempt ............................... Exempt.
or places within a single COTP Zone.
* * * * * * *
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] transitional program for covered Portal should include the docket
■ 3. Amend § 151.2060 as follows: business method patents (‘‘CBM’’) number (PTO–P–2018–0036).
■ a. In paragraph (b), remove the words proceedings before the Patent Trial and Comments may also be submitted by
‘‘Unless operating exclusively on Appeal Board (‘‘PTAB’’ or ‘‘Board’’). In postal mail addressed to: Mail Stop
voyages between ports or places within particular, the Office proposes to Patent Board, Director of the United
a single COTP Zone, the’’ and add, in replace the broadest reasonable States Patent and Trademark Office,
their place, the word ‘‘The’’; and interpretation (‘‘BRI’’) standard for P.O. Box 1450, Alexandria, VA 22313–
■ b. Remove paragraphs (e) and (f). construing unexpired patent claims and 1450, marked to the attention of ‘‘Vice
Dated: May 4, 2018. proposed claims in these trial Chief Administrative Patent Judges
J. G. Lantz, proceedings with a standard that is the Michael Tierney or Jacqueline Wright
Director of Commercial Regulations and same as the standard applied in federal Bonilla, PTAB Notice of Proposed
Standards. district courts and International Trade Rulemaking 2018.’’
[FR Doc. 2018–09877 Filed 5–8–18; 8:45 am] Commission (‘‘ITC’’) proceedings. The Although comments may be
BILLING CODE 9110–04–P
Office also proposes to amend the rules submitted by postal mail, the Office
to add that the Office will consider any prefers to receive comments by
prior claim construction determination electronic mail message to more easily
concerning a term of the involved claim share all comments with the public. The
DEPARTMENT OF COMMERCE
in a civil action, or an ITC proceeding, Office prefers the comments to be
Patent and Trademark Office that is timely made of record in an IPR, submitted in plain text, but also accepts
PGR, or CBM proceeding. comments submitted in searchable
37 CFR Part 42 DATES: Comment Deadline Date: The ADOBE® portable document format or
Office solicits comments from the MICROSOFT WORD® format.
[Docket No. PTO–P–2018–0036]
public on this proposed rulemaking. Comments not submitted electronically
RIN 0651–AD16 Written comments must be received on should be submitted on paper in a
or before July 9, 2018 to ensure format that accommodates digital
Changes to the Claim Construction scanning into ADOBE® portable
Standard for Interpreting Claims in consideration.
document format.
Trial Proceedings Before the Patent ADDRESSES: Comments should be sent The comments will be available for
Trial and Appeal Board by electronic mail message over the public inspection at the Patent Trial and
AGENCY: United States Patent and internet addressed to: PTABNPR2018@ Appeal Board, located in Madison East,
Trademark Office, Department of uspto.gov. Comments may also be sent Ninth Floor, 600 Dulany Street,
Commerce. by electronic mail message over the Alexandria, Virginia. Comments also
amozie on DSK3GDR082PROD with PROPOSALS
ACTION: Notice of proposed rulemaking.
internet via the Federal eRulemaking will be available for viewing via the
Portal at http://www.regulations.gov. Office’s internet website, https://
SUMMARY: The United States Patent and See the Federal eRulemaking Portal go.usa.gov/xXXFW, and on the Federal
Trademark Office (‘‘USPTO’’ or website for additional instructions on eRulemaking Portal. Because comments
‘‘Office’’) proposes changes to the claim providing comments via the Federal will be made available for public
construction standard for interpreting eRulemaking Portal. All comments inspection, information that the
claims in inter partes review (‘‘IPR’’), submitted directly to the USPTO or submitter does not desire to be made
post-grant review (‘‘PGR’’), and the provided on the Federal eRulemaking public, such as address or phone
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![21222 Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
number, should not be included in the Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. AIA trial proceedings that might be
comments. 2017) (noting that ‘‘[t]he Board beneficial. See Request for Comments,
FOR FURTHER INFORMATION CONTACT: construes claims of an expired patent in 79 FR at 36476–77.
Michael Tierney and Jacqueline Wright accordance with Phillips . . . and Upon receiving comments from the
Bonilla, Vice Chief Administrative [u]nder that standard, words of a claim public and carefully reviewing the
Patent Judges, by telephone at (571) are generally given their ordinary and comments, the Office published two
272–9797. customary meaning’’). final rules in response to the public
Costs and Benefits: This rulemaking is feedback with respect to the AIA trial
SUPPLEMENTARY INFORMATION:
not economically significant, and is not proceedings. In the first final rule, the
Executive Summary significant, under Executive Order Office changed the existing rules, among
Purpose: This proposed rule would 12866 (Sept. 30, 1993), as amended by other things, to: (1) Increase the page
amend the rules for IPR, PGR, and CBM Executive Order 13258 (Feb. 26, 2002) limit for Patent Owner’s motion to
proceedings that implemented and Executive Order 13422 (Jan. 18, amend by ten pages and allow a claims
provisions of the Leahy-Smith America 2007). appendix to be filed with the motion;
Invents Act (‘‘AIA’’) providing for trials and (2) increase the page limit for
Background
before the Office, by replacing the Petitioner’s reply to Patent Owner’s
On September 16, 2011, the AIA was response by ten pages. Amendments to
current claim construction standard for enacted into law (Pub. L. 112–29, 125 the Rules of Practice for Trials Before
interpreting unexpired patent claims Stat. 284 (2011)), and within one year, the Patent Trial and Appeal Board, 80
and claims proposed in a motion to the Office implemented rules to govern FR 28561 (May 19, 2015). In the second
amend, with an approach that is the Office practice for AIA trials, including final rule, the Office changed the
same as the standard used by Article III IPR, PGR, CBM, and derivation existing rules to: (1) Allow new
federal courts following Phillips v. AWH proceedings pursuant to 35 U.S.C. 135, testimonial evidence to be submitted
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en 316 and 326 and AIA 18(d)(2). See Rules with a patent owner’s preliminary
banc). This proposed rule also would of Practice for Trials Before the Patent response; (2) allow a claim construction
amend the rules to add that the Office Trial and Appeal Board and Judicial approach that emulates the approach
will consider any prior claim Review of Patent Trial and Appeal used by a district court for claims of
construction determination concerning Board Decisions, 77 FR 48612 (Aug. 14, patents that will expire before entry of
a term of the involved claim in a civil 2012); Changes to Implement Inter a final written decision; (3) replace page
action, or an ITC proceeding, that is Partes Review Proceedings, Post-Grant limits with word count limits for major
timely made of record in an IPR, PGR, Review Proceedings, and Transitional briefing; and (4) add a Rule 11-type
or CBM proceeding. Program for Covered Business Method certification for papers filed in a
Summary of Major Provisions: The Patents, 77 FR 48680 (Aug. 14, 2012); proceeding. Amendments to Rules of
Office is using over five years of Transitional Program for Covered Practice for Trials Before the Patent
historical data and user experiences to Business Method Patents—Definitions Trial and Appeal Board, 81 FR 18750
further shape and improve PTAB trial of Covered Business Method Patent and (April 1, 2016).
proceedings, particularly IPR, PGR, and Technological Invention, 77 FR 48734
CBM proceedings. In this notice of (Aug. 14, 2012). Additionally, the Office Claim Construction Standard
proposed rulemaking, the Office seeks published a Patent Trial Practice Guide The Board currently construes
feedback and information in relation to to advise the public on the general unexpired patent claims and proposed
the Office’s proposed changes to the framework of the regulations, including claims in AIA trial proceedings using
claim construction standard used for the structure and times for taking action the BRI standard, as directed by 37 CFR
interpreting unexpired patent claims in each of the new proceedings. See 42.100(b), 42.200(b), and 42.300(b) (‘‘A
and claims proposed in a motion to Office Patent Trial Practice Guide, 77 FR claim in an unexpired patent that will
amend. The Supreme Court of the 48756 (Aug. 14, 2012). not expire before a final written
United States has endorsed the Office’s Previously, in an effort to gauge the decision is issued shall be given its
ability to choose an approach to claim effectiveness of the rules governing AIA broadest reasonable construction in
construction for AIA trial proceedings. trial proceedings, the Office led a light of the specification of the patent in
Cuozzo Speed Techs., LLC v. Lee, 136 S. nationwide listening tour in April and which it appears.’’). The BRI standard
Ct. 2131, 2144–46 (2016). Some parties May of 2014. During the listening tour, differs from the standard used in federal
have expressed a desire that the Office the Office solicited feedback on how to district courts and the ITC, which
apply the same claim construction make the AIA trial proceedings more construe patent claims in accordance
standard used in federal district courts, transparent and effective by adjusting with the principles that the United
rather than the current standard of BRI. the rules and guidance to the public States Court of Appeals for the Federal
As part of the Office’s continuing efforts where necessary. To elicit even more Circuit articulated in Phillips.
to improve the trial proceedings, it is input, in June of 2014, the Office However, although the BRI standard
appropriate to revisit the claim published a Request for Comments in is consistent with longstanding agency
construction standard applied in AIA the Federal Register and, at public practice, the fact that the Office uses a
trial proceedings involving unexpired request, extended the period for claim construction standard that is
patent claims and claims proposed in a receiving comments to October 16, different from that used by federal
motion to amend. The proposed changes 2014. See Request for Comments on district courts and the ITC means that
amozie on DSK3GDR082PROD with PROPOSALS
would replace the BRI standard with an Trial Proceedings Under the America decisions construing the same or similar
approach that would be consistent with Invents Act Before the Patent Trial and claims in those fora may be different
the claim construction standard used in Appeal Board, 79 FR 36474 (June 27, from those in AIA trial proceedings and
federal district courts. The proposed 2014) (‘‘Request for Comments’’). The vice versa. Minimizing differences
changes also would be consistent with Request for Comments asked seventeen between claim construction standards
the Office’s current approach for questions on ten broad topics, including used in the various fora could lead to
interpreting claims in an expired patent. a general catchall question, to gather greater uniformity and predictability of
See Wasica Fin. GmbH v. Cont’l Auto. public feedback on any changes to the the patent grant. In addition, using the
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![Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules 21223
same standard in the various fora could streamline patent system that will meaning that the term would have to a
help increase judicial efficiency overall. improve patent quality and limit person of ordinary skill in the art in
One study found that 86.8% of patents unnecessary and counterproductive question at the time of the invention,
at issue in AIA trial proceedings also litigation costs.’’). The claim i.e., as of the effective filing date of the
have been the subject of litigation in the construction standard could be outcome patent application.’’ Id. at 1212–1313.
federal courts. Saurabh Vishnubhakat, determinative. PPC Broadband, Inc. v. The specification is ‘‘the single best
Arti K. Rai & Jay P. Kesan, Strategic Corning Optical Comm’ns RF, LLC, 815 guide to the meaning of a disputed term
Decision Making in Dual PTAB and F.3d 734, 740–42 (Fed. Cir. 2016) and . . . acts as a dictionary when it
District Court Proceedings, 31 Berkeley (noting that ‘‘[t]his case hinges on the expressly defines terms used in the
Tech. L.J. 45 (2016), https://ssrn.com/ claim construction standard applied—a claims or when it defines terms by
abstract=2731002. Thus, the high scenario likely to arise with implication.’’ Id. at 1321. Although the
percentage of overlap between AIA trial frequency’’); see also Rembrandt prosecution history ‘‘often lacks the
proceedings and district court litigation Wireless Techs., LP v. Samsung Elecs. clarity of the specification and thus is
favors using a claim construction Co., 853 F.3d 1370, 1377 (Fed. Cir. less useful for claim construction
standard in AIA trials that is consistent 2017) (noting that ‘‘the Board in IPR purposes,’’ it is another source of
with the standard used by federal proceedings operates under a broader intrinsic evidence that can ‘‘inform the
district courts and the ITC. claim construction standard than the meaning of the claim language by
Having AIA trial proceedings use the federal courts’’); Google LLC v. Network- demonstrating how the inventor
same claim construction standard that is 1 Techs., Inc.. No. 2016–2509, 2018 WL understood the invention and whether
applied in federal district courts and 1468370, at *5 (Fed. Cir. Mar. 26, 2018) the inventor limited the invention in the
ITC proceedings also addresses the (nonprecedential) (holding that ‘‘[i]n course of prosecution, making the claim
concern that potential unfairness could order to be found reasonable, it is not scope narrower than it would otherwise
result from using an arguably broader unnecessary that a claim be given its be.’’ Id. at 1317. Extrinsic evidence,
standard in AIA trial proceedings. correct construction under the such as expert testimony and
According to some patent owners, the framework laid out in Phillips.’’). Using dictionaries, may be useful in educating
same claim construction standard the same claim construction standard as the court regarding the field of the
should apply to both validity (or the standard applied in federal district invention or helping determine what a
patentability) determination and courts would ‘‘seek out the correct person of ordinary skill in the art would
infringement determination. Because construction—the construction that understand claim terms to mean. Id. at
the BRI standard potentially reads on a most accurately delineates the scope of 1318–19. However, extrinsic evidence
broader universe of prior art than does the claim invention—under the in general is viewed as less reliable than
the Phillips standard, a patent claim framework laid out in Phillips.’’ PPC intrinsic evidence. Id.
could be found unpatentable in an AIA Broadband, 815 F.3d at 740–42. Additionally, consistent with Phillips
trial on account of claim scope that the In this notice of proposed rulemaking, and its progeny, the doctrine of
patent owner would not be able to assert the Office proposes to change the construing claims to preserve their
in an infringement proceeding. For relevant rules to provide that a patent validity would apply to AIA trials.
example, even if a competitor’s product claim, or a claim proposed in a motion Phillips, 415 F.3d at 1327–28. As the
would not be found to infringe a patent to amend, shall be construed using the Federal Circuit recognized in Phillips,
claim if it was sold after the patent’s same claim construction standard that however, this doctrine is ‘‘of limited
effective filing date, the same product would be used to construe such claim utility.’’ Id.
nevertheless could constitute in a civil action to invalidate a patent The Court has not applied that
invalidating prior art if publicly sold under 35 U.S.C. 282(b), including doctrine broadly, and has ‘‘certainly not
before the patent’s effective filing date. construing the claim in accordance with endorsed a regime in which validity
The Office’s goal is to implement a the ordinary and customary meaning of analysis is a regular component of claim
fair and balanced approach, providing such claim as understood by one of construction.’’ Id. at 1327. The doctrine
greater predictability and certainty in ordinary skill in the art and the of construing claims to preserve their
the patent system. The Office has prosecution history pertaining to the validity has been limited to cases in
carefully considered ‘‘the effect of [the patent. This proposed change would which ‘‘the court concludes, after
proposed] regulation on the economy, replace the BRI standard for construing applying all the available tools of claim
the integrity of the patent system, the unexpired patent claims and proposed construction, that the claim is still
efficient administration of the Office, claims in IPR, PGR, and CBM ambiguous.’’ Id. (quoting Liebel-
and the ability of the Office to complete proceedings with an approach that Flarsheim Co. v. Medrad, Inc., 358 F.3d
timely the proceedings in promulgating follows the framework set forth in 898, 911 (Fed. Cir. 2004)). Moreover, the
regulations.’’ 35 U.S.C. 316(b) and Phillips. Federal Circuit ‘‘repeatedly and
326(b). Under 35 U.S.C. 316(a)(4) and Under the proposed approach, the consistently has recognized that courts
326(a)(4), the Office must prescribe Office would construe patent claims and may not redraft claims, whether to make
regulations establishing and governing proposed claims based on the record of them operable or to sustain their
IPR, PGR, and CBM proceedings and the the IPR, PGR, or CBM proceeding, validity.’’ Rembrandt Data Techs., LP v.
relationship of such review to other taking into account the claim language AOL, LLC, 641 F.3d 1331, 1339 (Fed.
proceedings, including civil actions to itself, specification, and prosecution Cir. 2011); see also MBO Labs., Inc. v.
invalidate a patent under 35 U.S.C. history pertaining to the patent. The Becton, Dickinson & Co., 474 F.3d 1323,
amozie on DSK3GDR082PROD with PROPOSALS
282(b). Congress intended these Office would apply the principles that 1332 (Fed. Cir. 2007) (noting that
administrative trial proceedings to the Federal Circuit articulated in ‘‘validity construction should be used as
provide ‘‘quick and cost effective Phillips and its progeny. For example, a last resort, not first principle’’).
alternatives’’ to litigation in the courts. claim construction begins with the The prosecution history taken into
H.R. Rep. No. 112–98, pt. 1, at 48 (2011), language of the claims. Phillips, 415 account would be the prosecution
as reprinted in 2011 U.S.C.C.A.N. 67, F.3d at 1312–14. The ‘‘words of a claim history that occurred previously at the
78; see also id. at 40 (AIA ‘‘is designed are generally given their ordinary and USPTO, including before an examiner
to establish a more efficient and customary meaning,’’ which is ‘‘the during examination, reissue,
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![21224 Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
reexamination, IPR, PGR, and CBM pertaining to the patent.’’ This proposed Rulemaking Considerations
proceedings. This would also include revision would replace the BRI standard A. Administrative Procedure Act
prosecution before an examiner in a for construing unexpired patent claims (APA): This proposed rule would revise
related application where relevant and proposed claims during an IPR, the rules relating to Office trial practice
(Trading Technologies Intern., Inc. v. PGR, or CBM proceeding with a for IPR, PGR, and CBM proceedings.
Open E Cry, LLC, 728 F.3d 1309 (Fed. standard that is the same as the standard The changes being proposed in this
Cir. 2013)) and any argument made on applied in federal district courts and notice of proposed rulemaking would
appeal of a rejection before the grant of ITC proceedings. As discussed above, not change the substantive criteria of
the patent for which review is sought, the Office would apply the principles patentability. These proposed changes
as those arguments are before the that the Federal Circuit articulated in involve rules of agency procedure and
examiner when the decision to allow an Phillips and its progeny. The Office interpretation. See Perez v. Mortg.
application is made (See TMC Fuel would construe patent claims and Bankers Ass’n, 135 S. Ct. 1199, 1204
Injection System, LLC v. Ford Motor proposed claims based on the record of (2015) (Interpretive rules ‘‘advise the
Company, 682 Fed. Appx. 895 (Fed. Cir. the IPR, PGR, or CBM proceeding, public of the agency’s construction of
2017)). taking into account the claim language
During an AIA trial proceeding, the the statutes and rules which it
itself, specification, and prosecution administers.’’ (citation and internal
patent owner may file a motion to history pertaining to the patent, as well
amend an unexpired patent claim to quotation marks omitted)); Bachow
as relevant extrinsic evidence, all as in Commc’ns, Inc. v. F.C.C., 237 F.3d 683,
propose a reasonable number of prevailing jurisprudence of Article III
substitute claims, but the proposed 690 (D.C. Cir. 2001) (rules governing an
courts. The prosecution history taken application process are procedural
claims ‘‘may not enlarge the scope of the into account would be the prosecution
claims of the patent or introduce new under the Administrative Procedure
history that occurred previously in Act); Inova Alexandria Hosp. v. Shalala,
matter.’’ 35 U.S.C. 316(d) and 326(d); 37 proceedings at the USPTO prior to the
CFR 42.121(a)(2) and 42.221(a)(2); see 244 F.3d 342, 350 (4th Cir. 2001) (rules
IPR, PGR, or CBM proceeding at issue, for handling appeals were procedural
also Aqua Prods., Inc. v. Matal, 872 F.3d including in another IPR, PGR, or CBM
1290, 1306 (noting that ‘‘[t]he patent where they did not change the
proceeding, or before an examiner substantive requirements for reviewing
owner proposes an amendment that it during examination, reissue, and
believes is sufficiently narrower than claims); Nat’l Org. of Veterans’
reexamination. Advocates, Inc. v. Sec’y of Veterans
the challenged claim to overcome the The Office has considered using
grounds of unpatentability upon which Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
different claim construction standards 2001) (rule that clarifies interpretation
the IPR was instituted’’). Among other for IPR, PGR, and CBM proceedings,
things, having the same claim of a statute is interpretive); JEM Broad.
but, for consistency, the Office proposes Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir.
construction standard for both the the same claim construction to be
original patent claims and proposed 1994) (rules are not legislative because
applied in all IPR, PGR, and CBM they do not ‘‘foreclose effective
claims would reduce the potential for proceedings.
inconsistency in the interpretation of opportunity to make one’s case on the
Each of §§ 42.100(b), 42.200(b), and merits’’).
the same or similar claim terms.
In addition, the Office intends that 42.300(b) also is proposed to be Accordingly, prior notice and
any proposed rule changes adopted in a amended to add the sentence ‘‘Any opportunity for public comment are not
final rule would be applied to all prior claim construction determination required pursuant to 5 U.S.C. 553(b) or
pending IPR, PGR, and CBM concerning a term of the claim in a civil (c) (or any other law). See Perez, 135 S.
proceedings before PTAB. action, or a proceeding before the Ct. at 1206 (Notice-and-comment
In light of the foregoing International Trade Commission, that is procedures are required neither when
considerations, the Office requests input timely made of record in the . . . an agency ‘‘issue[s] an initial
from the public on the proposed rule proceeding will be considered.’’ Under interpretive rule’’ nor ‘‘when it amends
changes in this notice of proposed this proposed provision, the Office or repeals that interpretive rule.’’);
rulemaking and on how the Office would consider any prior claim Cooper Techs. Co. v. Dudas, 536 F.3d
should implement the changes if construction determination in a civil 1330, 1336–37 (Fed. Cir. 2008) (stating
adopted. action or ITC proceeding if a federal that 5 U.S.C. 553, and thus 35 U.S.C.
court or the ITC has construed a term of 2(b)(2)(B), do not require notice and
Discussion of Specific Rules the involved claim previously using the comment rulemaking for ‘‘interpretative
Title 37 of the Code of Federal same standard, and the claim rules, general statements of policy, or
Regulations, part 42, is proposed to be construction determination has been rules of agency organization, procedure,
amended as follows: timely made of record in the IPR, PGR, or practice’’) (quoting 5 U.S.C.
Sections 42.100, 42.200, and 42.300: or CBM proceeding. 553(b)(3)(A)).
Each of §§ 42.100(b), 42.200(b), and Each of §§ 42.100(b), 42.200(b), and The Office, nevertheless, is publishing
42.300(b) is proposed to be amended to 42.300(b) further is proposed to be this proposed rule for comment to seek
replace the first sentence with the amended to delete the second and third the benefit of the public’s views on the
following: a claim of a patent, or a claim sentences, eliminating the procedure for Office’s proposed changes to the claim
proposed in a motion to amend, ‘‘shall requesting a district court-type claim construction standard for reviewing
be construed using the same claim construction approach for a patent patent claims and proposed claims in
amozie on DSK3GDR082PROD with PROPOSALS
construction standard that would be expiring during an IPR, PGR, or CBM AIA trial proceedings before the Board.
used to construe such claim in a civil proceeding. Such a procedure would B. Regulatory Flexibility Act: For the
action to invalidate a patent under 35 not be needed should the Office adopt reasons set forth herein, the Deputy
U.S.C. 282(b), including construing the the same claim construction standard, General Counsel for General Law of the
claim in accordance with the ordinary as proposed, for construing claims of United States Patent and Trademark
and customary meaning of such claim as unexpired patents as well as for Office has certified to the Chief Counsel
understood by one of ordinary skill in construing claims of expired patents in for Advocacy of the Small Business
the art and the prosecution history an IPR, PGR, or CBM proceeding. Administration that changes proposed
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![21226 Federal Register / Vol. 83, No. 90 / Wednesday, May 9, 2018 / Proposed Rules
(b) In an inter partes review of record in the covered business whose disclosure is restricted by statute.
proceeding, a claim of a patent, or a method patent review proceeding will Multimedia submissions (audio, video,
claim proposed in a motion to amend be considered. etc.) must be accompanied by a written
under § 42.121, shall be construed using * * * * * comment. The written comment is
the same claim construction standard considered the official comment and
Dated: May 3, 2018.
that would be used to construe such should include discussion of all points
claim in a civil action to invalidate a Andrei Iancu,
you wish to make. The EPA will
patent under 35 U.S.C. 282(b), including Under Secretary of Commerce for Intellectual generally not consider comments or
construing the claim in accordance with Property andDirector of the United States
comment contents located outside of the
Patent and Trademark Office.
the ordinary and customary meaning of primary submission (i.e., on the web,
such claim as understood by one of [FR Doc. 2018–09821 Filed 5–8–18; 8:45 am]
cloud, or other file sharing system). For
ordinary skill in the art and the BILLING CODE 3510–16–P
additional submission methods, the full
prosecution history pertaining to the EPA public comment policy,
patent. Any prior claim construction information about CBI or multimedia
determination concerning a term of the ENVIRONMENTAL PROTECTION submissions, and general guidance on
claim in a civil action, or a proceeding AGENCY making effective comments, please visit
before the International Trade http://www2.epa.gov/dockets/
Commission, that is timely made of 40 CFR Part 52
commenting-epa-dockets.
record in the inter partes review [EPA–R08–OAR–2018–0055; FRL–9977— FOR FURTHER INFORMATION CONTACT:
proceeding will be considered. 44—Region 8] Adam Clark, Air Program, U.S. EPA
* * * * * Region 8, (303) 312–7104, clark.adam@
■ 3. Amend § 42.200 by revising Interstate Transport Prongs 1 and 2 for
epa.gov.
paragraph (b) to read as follows: the 2012 Fine Particulate Matter (PM2.5)
Standard for Colorado, Montana, North SUPPLEMENTARY INFORMATION:
§ 42.200 Procedure; pendency. Dakota, South Dakota and Wyoming I. Background
* * * * *
(b) In a post-grant review proceeding, AGENCY: Environmental Protection On December 14, 2012, the EPA
a claim of a patent, or a claim proposed Agency (EPA). revised the primary annual PM2.5
in a motion to amend under § 42.221, ACTION: Proposed rule. NAAQS to 12.0 micrograms per cubic
shall be construed using the same claim meter (mg/m3). See 78 FR 3086 (January
SUMMARY: The Environmental Protection 15, 2013). An area meets the standard if
construction standard that would be Agency (EPA) is proposing to approve
used to construe such claim in a civil the three-year average of its annual
portions of State Implementation Plan average PM2.5 concentration (at each
action to invalidate a patent under 35 (SIP) submissions from Colorado,
U.S.C. 282(b), including construing the monitoring site in the area) is less than
Montana, North Dakota, South Dakota or equal to 12.0 mg/m3. The CAA
claim in accordance with the ordinary
and Wyoming addressing the Clean Air requires states to submit, within three
and customary meaning of such claim as
Act (CAA or Act) interstate transport years after promulgation of a new or
understood by one of ordinary skill in
SIP requirements for the 2012 annual revised standard, SIPs meeting the
the art and the prosecution history
Fine Particulate Matter (PM2.5) National applicable ‘‘infrastructure’’ elements of
pertaining to the patent. Any prior claim
Ambient Air Quality Standards sections 110(a)(1) and (2). One of these
construction determination concerning
(NAAQS). These submissions address applicable infrastructure elements, CAA
a term of the claim in a civil action, or
the requirement that each SIP contain section 110(a)(2)(D)(i), requires SIPs to
a proceeding before the International
adequate provisions prohibiting air contain ‘‘good neighbor’’ provisions to
Trade Commission, that is timely made
emissions that will have certain adverse prohibit certain adverse air quality
of record in the post-grant review
air quality effects in other states. The effects on neighboring states due to
proceeding will be considered.
EPA is proposing to approve portions of interstate transport of pollution.
* * * * * these infrastructure SIPs for the
■ 4. Amend § 42.300 by revising Section 110(a)(2)(D)(i) includes four
aforementioned states as containing distinct components, commonly
paragraph (b) to read as follows: adequate provisions to ensure that air referred to as ‘‘prongs,’’ that must be
§ 42.300 Procedure; pendency. emissions in the states will not addressed in infrastructure SIP
* * * * * significantly contribute to submissions. The first two prongs,
(b) In a covered business method nonattainment or interfere with which are codified in section
patent review proceeding, a claim of a maintenance of the 2012 annual PM2.5 110(a)(2)(D)(i)(I), are provisions that
patent, or a claim proposed in a motion NAAQS in any other state. prohibit any source or other type of
to amend under § 42.221, shall be DATES: Comments must be received on emissions activity in one state from
construed using the same claim or before June 8, 2018. contributing significantly to
construction standard that would be ADDRESSES: Submit your comments, nonattainment of the NAAQS in another
used to construe such claim in a civil identified by Docket ID No EPA–R08– state (prong 1) and from interfering with
action to invalidate a patent under 35 OAR–2018–0055 at http:// maintenance of the NAAQS in another
U.S.C. 282(b), including construing the www.regulations.gov. Follow the online state (prong 2). The third and fourth
claim in accordance with the ordinary instructions for submitting comments. prongs, which are codified in section
amozie on DSK3GDR082PROD with PROPOSALS
and customary meaning of such claim as Once submitted, comments cannot be 110(a)(2)(D)(i)(II), are provisions that
understood by one of ordinary skill in edited or removed from prohibit emissions activity in one state
the art and the prosecution history www.regulations.gov. The EPA may from interfering with measures required
pertaining to the patent. Any prior claim publish any comment received to its to prevent significant deterioration of air
construction determination concerning public docket. Do not submit quality in another state (prong 3) or
a term of the claim in a civil action, or electronically any information you from interfering with measures to
a proceeding before the International consider to be Confidential Business protect visibility in another state (prong
Trade Commission, that is timely made Information (CBI) or other information 4).
VerDate Sep<11>2014 17:09 May 08, 2018 Jkt 244001 PO 00000 Frm 00039 Fmt 4702 Sfmt 4702 E:\FR\FM\09MYP1.SGM 09MYP1](https://thefederalregister.org/doc/83_FR_21311/page/6.svg)
Document Created: 2018-05-09 03:17:53
Document Modified: 2018-05-09 03:17:53
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Proposed Rules | |
| Action | Notice of proposed rulemaking. | |
| 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. | |
| Contact | Michael Tierney and Jacqueline Wright Bonilla, Vice Chief Administrative Patent Judges, by telephone at (571) 272-9797. | |
| FR Citation | 83 FR 21221 | |
| RIN Number | 0651-AD16 | |
| CFR Associated | Administrative Practice and Procedure and Inventions and Patents |
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