  United States Court of Appeals
      for the Federal Circuit
                ______________________

  IN RE CUOZZO SPEED TECHNOLOGIES, LLC.
            ______________________

                      2014-1301
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2012-
00001.
                 ______________________

               Decided: February 4, 2015
                ______________________

    TIMOTHY M. SALMON, Cuozzo Speed Technologies,
LLC, of Basking Ridge, New Jersey, argued for appellant.
Of counsel on the brief was JOHN R. KASHA, Kasha Law
LLC, of North Potomac, Maryland.

    NATHAN K. KELLEY, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, argued for
intervenor. With him on the brief were SCOTT C.
WEIDENFELLER and ROBERT J. MCMANUS, Associate
Solicitors.
                _____________________

 Before NEWMAN, CLEVENGER, and DYK, Circuit Judges.
    Opinion for the court filed by Circuit Judge DYK.
   Dissenting opinion filed by Circuit Judge NEWMAN.
DYK, Circuit Judge.
2                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




    Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Pa-
tent No. 6,778,074 (the “’074 patent”). Garmin Interna-
tional, Inc. and Garmin USA, Inc. (collectively, “Garmin”)
petitioned the United States Patent and Trademark
Office (“PTO”) for inter partes review (“IPR”) of claims 10,
14, and 17 of the ’074 patent. The PTO granted Garmin’s
petition and instituted IPR. The Patent Trial and Appeal
Board (the “Board”) timely issued a final decision finding
claims 10, 14, and 17 obvious. The Board additionally
denied Cuozzo’s motion to amend the ’074 patent by
substituting new claims 21, 22, and 23 for claims 10, 14,
and 17.
    Contrary to Cuozzo’s contention, we hold that we lack
jurisdiction to review the PTO’s decision to institute IPR.
We affirm the Board’s final determination, finding no
error in the Board’s claim construction under the broadest
reasonable interpretation standard, the Board’s obvious-
ness determination, and the Board’s denial of Cuozzo’s
motion to amend.
                       BACKGROUND
    Cuozzo is the assignee of the ’074 patent, entitled
“Speed Limit Indicator and Method for Displaying Speed
and the Relevant Speed Limit,” which issued on August
17, 2004. The ’074 patent discloses an interface which
displays a vehicle’s current speed as well as the speed
limit. In one embodiment, a red filter is superimposed on
a white speedometer so that “speeds above the legal speed
limit are displayed in red . . . while the legal speeds are
displayed in white . . . .” Id. col. 5 ll. 35–37. A global
positioning system (“GPS”) unit tracks the vehicle’s
location and identifies the speed limit at that location.
The red filter automatically rotates when the speed limit
changes, so that the speeds above the speed limit at that
location are displayed in red. The patent also states that
the speed limit indicator may take the form of a colored
liquid crystal display (“LCD”). Id. col. 3 ll. 4–6, col. 6 ll.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                        3



11–14. In claim 10, the independent claim at issue here, a
colored display shows the current speed limit, and the
colored display is “integrally attached” to the speedome-
ter. Id. col. 7 l. 10.
    Claim 10 recites:
    A speed limit indicator comprising:
    a global positioning system receiver;
    a display controller connected to said global posi-
        tioning system receiver, wherein said display
        controller adjusts a colored display in re-
        sponse to signals from said global positioning
        system receiver to continuously update the de-
        lineation of which speed readings are in viola-
        tion of the speed limit at a vehicle’s present
        location; and
    a speedometer integrally attached to said colored
        display.
Id. col. 7 ll. 1–10. Claim 14 is addressed to “[t]he speed
limit indicator as defined in claim 10, wherein said col-
ored display is a colored filter.” Id. col. 7 ll. 23–24. Claim
17 recites: “[t]he speed limit indicator as defined in claim
14, wherein said display controller rotates said colored
filter independently of said speedometer to continuously
update the delineation of which speed readings are in
violation of the speed limit at a vehicle's present loca-
tion.” Id. col. 8 ll. 5–9.
    On September 16, 2012, Garmin filed a petition with
the PTO to institute IPR of, inter alia, claims 10, 14, and
17 the ’074 patent. Garmin contended that claim 10 was
invalid as anticipated under 35 U.S.C. § 102(e) or as
obvious under 35 U.S.C. § 103(a) and that claims 14 and
17 were obvious under § 103(a). The PTO instituted IPR,
determining that there was a reasonable likelihood that
claims 10, 14, and 17 were obvious under § 103 over (1)
U.S. Patent Nos. 6,633,811 (“Aumayer”), 3,980,041 (“Ev-
ans”), and 2,711,153 (“Wendt”); and/or (2) German Patent
4                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




No. 197 55 470 (“Tegethoff”), U.S. Patent No. 6,515,596
(“Awada”), Evans, and Wendt. Although Garmin’s petition
with respect to claim 17 included the grounds on which
the PTO instituted review, the petition did not list Evans
or Wendt for claim 10 or Wendt for claim 14.
    In its subsequent final decision, the Board explained
that “[a]n appropriate construction of the term ‘integrally
attached’ in independent claim 10 is central to the pa-
tentability analysis of claims 10, 14, and 17.” J.A. 7. The
Board applied a broadest reasonable interpretation
standard and construed the term “integrally attached” as
meaning “discrete parts physically joined together as a
unit without each part losing its own separate identity.”
J.A. 9. The Board found that claims 10, 14, and 17 were
unpatentable as obvious under 35 U.S.C. § 103 (1) over
Aumayer, Evans, and Wendt; and, alternatively, (2) over
Tegethoff, Awada, Evans, and Wendt.
    The Board also denied Cuozzo’s motion to amend the
patent by replacing claims 10, 14, and 17 with substitute
claims 21, 22, and 23. The Board’s denial of the motion to
amend centered on proposed claim 21. 1 Claim 21 would
have amended the patent to claim “a speedometer inte-
grally attached to [a] colored display, wherein the speed-
ometer comprises a liquid crystal display, and wherein
the colored display is the liquid crystal display.” J.A. 357–
58. The Board rejected the amendment because (1) substi-
tute claim 21 lacked written description support as re-
quired by 35 U.S.C. § 112, and (2) the substitute claims
would improperly enlarge the scope of the claims as
construed by the Board.


    1  The parties do not separately address claims 22
and 23 and apparently agree that the motion for leave to
amend on those claims presents the same issues as claim
21.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                       5



    Cuozzo appealed. The PTO intervened, and we grant-
ed Garmin’s motion to withdraw as appellee. 2 We have
jurisdiction to review the Board’s final decision under 28
U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
                              I
    IPRs proceed in two phases. St. Jude Med., Cardiolo-
gy Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375–76
(Fed. Cir. 2014). In the first phase, the PTO determines
whether to institute IPR. In the second phase, the Board
conducts the IPR proceeding and issues a final deci-
sion. Id.
    Cuozzo argues that the PTO improperly instituted
IPR on claims 10 and 14 because the PTO relied on prior
art that Garmin did not identify in its petition as grounds
for IPR as to those two claims (though the prior art in
question was identified with respect to claim 17). Under
the statute, any petition for IPR must “identif[y] . . . with
particularity . . . the grounds on which the challenge to
each claim is based . . . .” 35 U.S.C. § 312(a)(3). Cuozzo
argues that the PTO may only institute IPR based on
grounds identified in the petition because “[t]he Director
may not authorize an inter partes review to be instituted
unless the Director determines that the information
presented in the petition . . . and any response . . . shows
that there is a reasonable likelihood that the petitioner
would prevail . . . .” Id. § 314(a).
    Section 314(d) is entitled “No appeal” and provides
that “[t]he determination by the Director whether to



    2   Garmin filed a motion to withdraw because it
agreed not to participate in any appeal of the IPR written
decision as part of a settlement agreement with Cuozzo.
6                      IN RE CUOZZO SPEED TECHNOLOGIES, LLC




institute an inter partes review under this section shall be
final and nonappealable.” 35 U.S.C. § 314(d). The PTO
argues that § 314(d) precludes review of a determination
to institute IPR. Cuozzo argues that § 314(d) does not
completely preclude review of the decision to institute
IPR, but instead merely postpones review of the PTO’s
authority until after the issuance of a final decision by the
Board.
    We have previously addressed § 314(d) and have held
that it precludes interlocutory review of decisions whether
to institute IPR. In St. Jude, we characterized § 314(d) as
a “broadly worded bar on appeal” and held that § 314(d)
“certainly bars” interlocutory review of the PTO’s denial
of a petition for IPR. 749 F.3d at 1375–76. This result was
supported by § 319, which “authorizes appeals to this
court only from ‘the final written decision of the
[Board] . . . .’” Id. at 1375 (quoting 35 U.S.C. § 319) (alter-
ation in original). Similarly, the bar to interlocutory
review is supported by 35 U.S.C. § 141(c), which “author-
izes appeal only by ‘a party to an inter partes re-
view . . . who is dissatisfied with the final written decision
of the [Board] under section 318(a).’” Id. (quoting 35
U.S.C. § 141(c)) (alterations in original). But while we
stated that § 314 “may well preclude all review by any
route,” we did not decide the issue. Id. at 1376.
     We conclude that § 314(d) prohibits review of the de-
cision to institute IPR even after a final decision. On its
face, the provision is not directed to precluding review
only before a final decision. It is written to exclude all
review of the decision whether to institute review. Section
314(d) provides that the decision is both “nonappealable”
and “final,” i.e., not subject to further review. 35 U.S.C.
§ 314(d). A declaration that the decision to institute is
“final” cannot reasonably be interpreted as postponing
review until after issuance of a final decision on patenta-
bility. Moreover, given that § 319 and § 141(c) already
limit appeals to appeals from final decisions, § 314(d)
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      7



would have been unnecessary to preclude non-final review
of institution decisions. Because § 314(d) is unnecessary
to limit interlocutory appeals, it must be read to bar
review of all institution decisions, even after the Board
issues a final decision. Nor does the IPR statute expressly
limit the Board’s authority at the final decision stage to
the grounds alleged in the IPR petition. It simply author-
izes the Board to issue “a final written decision with
respect to the patentability of any patent claim challenged
by the petitioner and any new claim added under section
316(d).” 35 U.S.C. § 318(a).
     Our decision in In re Hiniker Co., 150 F.3d 1362, 1367
(Fed. Cir. 1998), confirms the correctness of the PTO’s
position here. There, even absent a provision comparable
to § 314(d), 3 we held that a flawed decision to institute
reexamination under 35 U.S.C. § 303 was not a basis for
setting aside a final decision. Hiniker, 150 F.3d at 1367.
Under the statute at issue in Hiniker, reexamination
could only be instituted if the Commissioner determined
that there was “a substantial new question of patentabil-
ity,” i.e., new prior art not considered by the examiner. 35
U.S.C. § 303(a) (1994). In Hiniker, the PTO instituted
reexamination based on prior art considered in the origi-
nal examination (Howard). Hiniker, 150 F.3d at 1365. But
the PTO’s final decision relied on East (which had not
been before the examiner in the initial examination) in
finding the claims invalid. Id. at 1366. We held that our
jurisdiction was only “over Hiniker’s appeal from the
[final] decision of the Board.” Id. at 1367. While the final



   3       Unlike § 314, the reexamination statute only pro-
vides that “[a] determination by the Commission-
er . . . that no substantial new question of patentability
has been raised will be final and nonappealable.” 35
U.S.C. § 303(c) (1994) (emphasis added).
8                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




decision would have been subject to reversal if it had
improperly relied only on prior art presented to the exam-
iner, 4 any error in instituting reexamination based on the
Howard reference was “washed clean during the reexami-
nation proceeding,” which relied on new art. Id. The fact
that the petition was defective is irrelevant because a
proper petition could have been drafted. The same is even
clearer here, where § 314(d) explicitly provides that there
is no appeal available of a decision to institute. There was
no bar here to finding claims 10 and 14 unpatentable
based on the Evans and/or Wendt references. The failure
to cite those references in the petition provides no ground
for setting aside the final decision.
    Cuozzo argues that Congress would not have intended
to allow the PTO to institute IPR in direct contravention
of the statute, for example, on grounds of prior public use
where the IPR statute permits petitions only on the basis
of “prior art consisting of patents or printed publications.”
35 U.S.C. § 311. The answer is that mandamus may be
available to challenge the PTO’s decision to grant a peti-
tion to institute IPR after the Board’s final decision in
situations where the PTO has clearly and indisputably
exceeded its authority.
    The PTO argues that our previous decisions preclude
mandamus. In In re Dominion Dealer Solutions, LLC, 749
F.3d 1379, 1381 (Fed. Cir. 2014), we held that mandamus
relief was not available to challenge the denial of a peti-
tion for IPR. Given the statutory scheme, there was no


    4   See In re Portola Packaging, Inc., 110 F.3d 786,
789, superseded by statute as recognized by In re NTP,
Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011); In re Recreative
Techs. Corp., 83 F.3d 1394 (Fed. Cir. 1996). Congress
subsequently amended the statute to provide for consid-
eration of prior art before the examiner. 35 U.S.C. § 303.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                       9



“‘clear and indisputable right’ to challenge a non-
institution decision directly in this court,” as required for
mandamus. Id. And in In re Procter & Gamble Co., 749
F.3d 1376, 1378–79 (Fed. Cir. 2014), we held that man-
damus was not available to provide immediate review of a
decision to institute IPR. There was no “clear and indis-
putable right to this court’s immediate review of a deci-
sion to institute an inter partes review, as would be
needed for mandamus relief.” Id. at 1379. Furthermore,
that “[wa]s not one of the rare situations in which irreme-
diable interim harm c[ould] justify mandamus, which is
unavailable simply to relieve [the patentee] of the burden
of going through the inter partes review.” Id. (citation
omitted). However, we did not decide the question of
whether the decision to institute review is reviewable by
mandamus after the Board issues a final decision or
whether such review is precluded by § 314(d). Id. Nor do
we do so now.
     Even if § 314 does not bar mandamus after a final de-
cision, at least “three conditions must be satisfied before
[a writ of mandamus] may issue.” Cheney v. U.S. Dist.
Court for the D.C., 542 U.S. 367, 380 (2004). “First, ‘the
party seeking issuance of the writ [must] have no other
adequate means to attain the relief he desires.’” Id. (quot-
ing Kerr v. U.S. Dist. Court for the N. Dist. of Cal., 426
U.S. 394, 403 (1976) (alteration in original)). That condi-
tion appears to be satisfied since review by appeal is
unavailable. “Second, the petitioner must satisfy ‘the
burden of showing that his right to issuance of the writ is
clear and indisputable.’” Id. at 381 (internal quotations,
citation, and alterations omitted). “Third, the issuing
court, in the exercise of its discretion, must be satisfied
that the writ is appropriate under the circumstances.” Id.
(citation omitted).
10                    IN RE CUOZZO SPEED TECHNOLOGIES, LLC




    Here, Cuozzo has not filed a mandamus petition, but
even if we were to treat its appeal as a request for man-
damus, 5 the situation here is far from satisfying the clear-
and-indisputable requirement for mandamus. It is not
clear that IPR is strictly limited to the grounds asserted
in the petition. The PTO urges that instituting IPR of
claims 10 and 14 based on the grounds for claim 17 was
proper because claim 17 depends from claim 14, which
depends from claim 10. Any grounds which would invali-
date claim 17 would by necessary implication also invali-
date claims 10 and 14. See Callaway Golf Co. v. Acushnet
Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader
independent claim cannot be nonobvious where a depend-
ent claim stemming from that independent claim is
invalid for obviousness.”). The PTO argues that Garmin
implicitly asserted that claims 10 and 14 were unpatenta-
ble when it asserted that claim 17 was unpatentable.
Whether or not the PTO is correct in these aspects, it is at
least beyond dispute there is no clear and indisputable
right that precludes institution of the IPR proceeding. We
need not decide whether mandamus to review institution
of IPR after a final decision is available in other circum-
stances.
                             II
    Cuozzo contends in addition that the Board erred in
finding the claims obvious, arguing initially that the



     5   See 16 Charles A. Wright, Arthur R. Miller & Ed-
ward H. Cooper, Federal Practice and Procedure § 3932.1
(3d ed. 2012) (“Many cases illustrate the seemingly con-
verse proposition that . . . an appeal can substitute for a
writ in the sense that an attempted appeal from an order
that is nonappealable can be treated as a petition for a
writ.” (citations omitted)).
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                       11



Board should not have applied the broadest reasonable
interpretation standard in claim construction.
                              A
     The America Invents Act (“AIA”) created IPR, but the
statute on its face does not resolve the issue of whether
the broadest reasonable interpretation standard is appro-
priate in IPRs; it is silent on that issue. However, the
statute conveys rulemaking authority to the PTO. It
provides that “[t]he Director shall prescribe regulations,”
inter alia, “setting forth the standards for the showing of
sufficient grounds to institute . . . review,” and “establish-
ing and governing inter partes review . . . and the rela-
tionship of such review to other proceedings . . . .” 35
U.S.C. § 316(a)(2), (a)(4). Pursuant to this authority, the
PTO has promulgated 37 C.F.R. § 42.100(b), which pro-
vides that “[a] claim in an unexpired patent shall be given
its broadest reasonable construction in light of the specifi-
cation of the patent in which it appears.” 37 C.F.R.
§ 42.100(b). Cuozzo argues that the PTO lacked authority
to promulgate § 42.100(b) and that the broadest reasona-
ble interpretation standard is inappropriate in an adjudi-
catory IPR proceeding. The PTO argues that 35 U.S.C.
§ 316 provides the necessary authority to the PTO to
promulgate § 42.100(b) and that the broadest reasonable
interpretation is appropriately applied in the IPR context.
                              1
    Before addressing the scope of the PTO’s rulemaking
authority, we consider the history of the broadest reason-
able interpretation standard and the bearing of that
history on the interpretation of the IPR statute. No sec-
tion of the patent statute explicitly provides that the
broadest reasonable interpretation standard shall be used
in any PTO proceedings.
    Nonetheless, the broadest reasonable interpretation
standard has been applied by the PTO and its predecessor
12                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




for more than 100 years in various types of PTO proceed-
ings. A 1906 PTO decision explained, “[n]o better method
of construing claims is perceived than to give them in
each case the broadest interpretation which they will
support without straining the language in which they are
couched.” Podlesak v. McInnerney, 1906 Dec. Comm’r Pat.
265, 258. For more than a century, courts have approved
that standard. See, e.g., Miel v. Young, 29 App. D.C. 481,
484 (D.C. Cir. 1907) (“This claim should be given the
broadest interpretation which it will support . . . .”); In re
Rambus, Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014)
(“Claims are generally given their ‘broadest reasonable
interpretation’ consistent with the specification during
reexamination.” (citation omitted)); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“Giving
claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justi-
fied.’” (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed.
Cir. 1984))); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (“[W]e reject appellants’ invitation to construe
either of the cases cited by appellants so as to over-
rule, sub silentio, decades old case law. . . . It would be
inconsistent with the role assigned to the PTO in issuing
a patent to require it to interpret claims in the same
manner as judges who, post-issuance, operate under the
assumption the patent is valid. The process of patent
prosecution is an interactive one.”); In re Carr, 297 F. 542,
544 (D.C. Cir. 1924) (“For this reason we have uniformly
ruled that claims will be given the broadest interpretation
of which they reasonably are susceptible. This rule is a
reasonable one, and tends not only to protect the real
invention, but to prevent needless litigation after the
patent has issued.”); In re Kebrich, 201 F.2d 951, 954
(CCPA 1953) (“[I]t is . . . well settled that . . . the tribunals
[of the PTO] and the reviewing courts in the initial con-
sideration of patentability will give claims the broadest
interpretation which, within reason, may be applied.”).
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      13



    This court has approved of the broadest reasonable in-
terpretation standard in a variety of proceedings, includ-
ing initial examinations, interferences, and post-grant
proceedings such as reissues and reexaminations. Indeed,
that standard has been applied in every PTO proceeding
involving unexpired patents. 6 In doing so, we have cited
the long history of the PTO’s giving claims their broadest
reasonable construction. See, e.g., Yamamoto, 740 F.2d at
1571–72 (reexaminations); In re Reuter, 670 F.2d 1015,
1019 (CCPA 1981) (reissues); Reese v. Hurst, 661 F.2d
1222, 1236 (CCPA 1981) (interferences); In re Prater, 415
F.2d 1393, 1404–05 (CCPA 1969) (examinations). Apply-
ing the broadest reasonable interpretation standard
“reduce[s] the possibility that, after the patent is granted,
the claims may be interpreted as giving broader coverage
than is justified.” Reuter, 670 F.2d at 1015
ing Prater, 415 F.2d at 1404–05).
    There is no indication that the AIA was designed to
change the claim construction standard that the PTO has
applied for more than 100 years. Congress is presumed to
legislate against the background of existing law where
Congress in enacting legislation is aware of the prevailing
rule. As we held in GPX International Tire Corp. v. United
States, “the principle of legislative ratification is well



    6   The claims of an expired patent are the one excep-
tion where the broadest reasonable interpretation is not
used because the patentee is unable to amend the claims.
Rambus, 753 F.3d at 1256 (“If, as is the case here, a
reexamination involves claims of an expired patent, a
patentee is unable to make claim amendments and the
PTO applies the claim construction principles outlined by
this court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005).” (citations omitted)).
14                   IN RE CUOZZO SPEED TECHNOLOGIES, LLC




established. In the case of a widely known judicial deci-
sion or agency practice, Congress is presumed to be aware
of an administrative or judicial interpretation of a statute
and to adopt that interpretation when it re-enacts a
statute without change.” 666 F.3d 732, 739 (Fed. Cir.
2011) (internal quotation marks and citations omit-
ted), superseded in part by statute as recognized in 678
F.3d 1308 (Fed. Cir. 2012); Astoria Fed. Sav. & Loan
Ass’n v. Solimino, 501 U.S. 108, 110 (1991); Procter &
Gamble Co. v. Kraft Foods Global, 549 F.3d 842, 848–49
(Fed. Cir. 2008) (improper to presume that congress
would alter the backdrop of existing law sub silentio).
    Here, Congress in enacting the AIA was well aware
that the broadest reasonable interpretation standard was
the prevailing rule. See 157 Cong. Rec. S1375 (daily ed.
Mar. 8, 2011) (statement of Sen. Kyl) (allowing written
statements to be considered in inter partes review
“should . . . allow the Office to identify inconsistent
statements made about claim scope—for example, cases
where a patent owner successfully advocated a claim
scope in district court that is broader than the ‘broadest
reasonable construction’ that he now urges in an inter
partes review”). It can therefore be inferred that Congress
impliedly adopted the existing rule of adopting the broad-
est reasonable construction.
    Cuozzo argues that judicial or congressional approval
of the broadest reasonable interpretation standard for
other proceedings is irrelevant here because the earlier
judicial decisions relied on the availability of amendment,
and the AIA limits amendments in IPR proceedings. 7



     7  See, e.g., Yamamoto, 740 F.2d at 1571–72 (“An
applicant’s ability to amend his claims to avoid cited prior
art distinguishes proceedings before the PTO from pro-
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                       15



     But IPR proceedings are not materially different in
that respect. Section 316(d)(1) provides that a patentee
may file one motion to amend in order to “[c]ancel any
challenged patent claim” or “[f]or each challenged claim,
propose a reasonable number of substitute claims,” 35
U.S.C. § 316(d)(1), though “[a]n amendment . . . may not
enlarge the scope of the claims of the patent or introduce
new matter,” id. § 316(d)(3). The PTO regulations provide
that “[a] patent owner may file one motion to amend a
patent, but only after conferring with the Board.” 37
C.F.R. § 42.221(a). “The presumption is that only one
substitute claim would be needed to replace each chal-
lenged claim, and it may be rebutted by a demonstration
of need.” Id. § 42.221(a)(3). The statute also provides that
“[a]dditional motions to amend may be permitted upon
the joint request of the petitioner and the patent own-
er . . . .” 35 U.S.C. § 316(d)(2). “A motion to amend may be
denied where” the amendment either “does not respond to


ceedings in federal district courts on issued patents.”
(emphasis added)); Reuter, 670 F.2d at 1019 (“It is well
settled that claims before the PTO are to be given their
broadest reasonable interpretation consistent with the
specification during the examination of a patent applica-
tion since the applicant may then amend his claims . . . .”
(internal quotation marks omitted)); Prater, 415 F.2d at
1404–05 (“[T]his court has consistently taken the tack
that claims yet unpatented are to be given the broadest
reasonable interpretation consistent with the specification
during the examination of a patent application since the
applicant may then amend his claims . . . .”); see also, e.g.,
In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (“As
explained in the Manual of Patent Examining Procedure
(MPEP) . . . , Applicant always has the opportunity to
amend the claims during prosecution . . . .” (internal
quotation marks omitted)).
16                   IN RE CUOZZO SPEED TECHNOLOGIES, LLC




a ground of unpatentability involved in the [IPR] trial” or
“seeks to enlarge the scope of the claims of the patent or
introduce new subject matter.” 37 C.F.R. § 42.221(a)(2).
    Although the opportunity to amend is cabined in the
IPR setting, it is thus nonetheless available. The fact that
the patent owner may be limited to a single amendment,
may not broaden the claims, and must address the ground
of unpatentability is not a material difference. Nor is the
fact that IPR may be said to be adjudicatory rather than
an examination. Interference proceedings are also in some
sense adjudicatory, see Brand v. Miller, 487 F.3d 862,
867–68 (Fed. Cir. 2007) (characterizing interference
proceedings as adjudicatory and holding that the Board’s
decision be reviewed on the record), yet the broadest
reasonable        interpretation     standard       applies,
see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 500
(Fed. Cir. 1997) (“In the absence of ambiguity, it is fun-
damental that the language of a count should be given the
broadest reasonable interpretation it will support . . . .”
(quoting In re Baxter, 656 F.2d 679, 686 (CCPA 1981))). In
any event, Congress in enacting the AIA was aware of
these differences in terms of amendments and adjudica-
tion and did not provide for a different standard than the
broadest reasonable interpretation standard. We conclude
that Congress implicitly adopted the broadest reasonable
interpretation standard in enacting the AIA.
                             2
    Even if we were to conclude that Congress did not
adopt the broadest reasonable interpretation standard in
enacting the AIA, § 316 provides authority to the PTO to
conduct rulemaking. Although we have previously held
that 35 U.S.C. § 2(b) does not grant substantive rulemak-
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      17



ing authority to the PTO, 8 Cooper Techs. Co. v. Dudas,
536 F.3d 1330, 1335–36 (Fed. Cir. 2008), the AIA granted
new rulemaking authority to the PTO. Section 316(a)(2)
provides that the PTO shall establish regulations “setting
forth the standards for the showing of sufficient grounds
to institute a review . . . .” 35 U.S.C. § 316(a)(2). Section
316(a)(4) further provides the PTO with authority for
“establishing and governing inter partes review under
this chapter and the relationship of such review to other
proceedings under this title.” Id. § 316(a)(4). These provi-
sions expressly provide the PTO with authority to estab-
lish regulations setting the “standards” for instituting



    8   Section 2 provides, in relevant part:
    (b) Specific Powers.—the Office—
        ...
        (2) may establish regulations, not incon-
        sistent with law, which
              (A) shall govern the conduct of
              proceedings in the Office;
              (B) shall be made in accordance
              with section 553 of title 5;
              (C) shall facilitate and expedite
              the processing of patent applica-
              tions, particularly those which can
              be    filed,   stored,    processed,
              searched, and retrieved electroni-
              cally, subject to the provisions of
              section 122 relating to the confi-
              dential status of applications[.]
    35 U.S.C. § 2(b)(2)(A)–(C).
18                   IN RE CUOZZO SPEED TECHNOLOGIES, LLC




review and regulating IPR proceedings. The broadest
reasonable interpretation standard affects both the PTO’s
determination of whether to institute IPR proceedings
and the proceedings after institution and is within the
PTO’s authority under the statute.
    Because Congress authorized the PTO to prescribe
regulations, the validity of the regulation is analyzed
according to the familiar Chevron framework. See United
States v. Mead Corp., 533 U.S. 218, 226–27 (2001); Wilder
v. Merit Sys. Prot. Bd., 675 F.3d 1319, 1322 (Fed. Cir.
2012). Under Chevron, the first question is “whether
Congress has directly spoken to the precise question at
issue.” Chevron, U.S.A. v. Natural Res. Def. Council, Inc.,
467 U.S. 837, 842 (1984); accord Cooper, 536 F.3d at 1337
(quoting Hawkins v. United States, 469 F.3d 993, 1000
(Fed. Cir. 2006)). If the statute is ambiguous, the second
question is “whether the agency’s interpretation is based
on a permissible construction of the statutory language at
issue.” Cooper, 536 F.3d at 1338 (quoting Hawkins, 469
F.3d at 1000).
    In the text of the IPR statute, Congress was silent on
the subject of claim construction standards, and, if we
assume arguendo that it did not adopt the broadest
reasonable interpretation standard, step one of Chevron is
satisfied. We proceed to step two of the Chevron analysis.
The regulation here presents a reasonable interpretation
of the statute. The PTO has long applied the broadest
reasonable interpretation standard in other proceedings,
suggesting that a broadest reasonable interpretation
standard is appropriate in IPRs. As discussed above, the
policy rationales for the broadest reasonable interpreta-
tion standard in other examination proceedings also apply
in the IPR context. The statute also provides for the PTO
to exercise discretion to consolidate an IPR with another
proceeding before the PTO. See 35 U.S.C. § 315(d). The
possibility of consolidating multiple types of proceedings
suggests a single claim construction standard across
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                     19



proceedings is appropriate. 37 C.F.R. § 42.221(a) reflects a
permissible construction of the statutory language in
§ 316(a). Even if the broadest reasonable interpretation
standard were not incorporated into the IPR provisions of
the statute, the standard was properly adopted by PTO
regulation.
                             B
    The second issue is whether the Board here properly
construed the claims under the broadest reasonable
interpretation standard. We review the Board’s claim
construction according to the Supreme Court's decision in
Teva Pharmaceuticals U.S.A., Inc. v. Sandoz, Inc., 135 S.
Ct. 831, 841 (2015). We review underlying factual deter-
minations concerning extrinsic evidence for substantial
evidence and the ultimate construction of the claim de
novo. See id. Because there is no issue here as to extrinsic
evidence, we review the claim construction de novo.
    Claim 10 includes the following limitation: “a speed-
ometer integrally attached to said colored display.” ’074
patent col. 7 l. 10. Cuozzo argues that the board improper-
ly construed the phrase “integrally attached.” The Board
construed “integrally attached” as meaning “discrete
parts physically joined together as a unit without each
part losing its own separate identity.” J.A. 9. Cuozzo
contends that the correct construction of “integrally
attached” should be broader—“joined or combined to work
as a complete unit.” Appellant’s Br. 33. Before the Board,
Cuozzo stated that its construction would cover “a display
that both functionally and structurally integrates the
speedometer and the colored display, such that there only
is a single display.” J.A. 10. Cuozzo argues that the
Board’s claim construction improperly excludes a single-
LCD embodiment of the invention wherein the speedome-
ter and the speed limit indicator are on the same LCD.
    The phrase “integrally attached” was not included in
either the specification or the claims as originally filed.
20                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




The phrase was introduced by an amendment to claim 10
to overcome a rejection that the claim was anticipated
under § 102(e) by Awada. 9
     We see no error in the Board’s interpretation. The
word “attached” must be given some meaning. As the
Board explained, it would “be illogical to regard one unit
as being ‘attached’ to itself.” J.A. 9. The specification
further supports the Board’s construction that the speed-
ometer and the speed limit are independent—it repeated-
ly refers to a speed limit indicator independent of any
speedometer and states that “the present invention essen-
tially comprises a speed limit indicator comprising a
speed limit display and an attached speedometer.” ’074


     9  Claim 10 of the ’074 patent corresponds to the
claim numbered as claim 11 during patent prosecution.
    Prior to amendment, claim 10 included the limitation:
“a speedometer attached to said speed limit display.” J.A.
100. Cuozzo’s proposed amendment to that limitation
recited “a speedometer integrally attached to said colored
display.” Id. In proposing the amendment, Cuozzo argued
that the amendment overcame Awada because
     “[t]he cited Awada (6,515,596) lacks a speedome-
     ter integrally attached to the speed limit dis-
     play . . . . The vehicle’s driver is forced to look in
     two separate locations and then mentally compare
     the speed limit with his vehicle’s speed to deter-
     mine how close he is to speeding if he is not al-
     ready doing so sufficiently to activate the light
     and/or tone. . . . In contrast, the present invention
     provides an integrated display allowing the driver
     to immediately ascertain both his speed and its
     relation to the prevailing speed limit.”
J.A. 104–105.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      21



patent col. 2 ll. 52–54. The Board did not err in its claim
construction.
                             C
     The third question is whether claims 10, 14, and 17
were obvious. We review the Board’s factual findings for
substantial evidence and review its legal conclusions de
novo. In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed.
Cir. 2012). The ultimate determination of obviousness
under § 103 is a question of law based on underlying
factual findings. Id. (citing Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966)). What a reference teaches and the
differences between the claimed invention and the prior
art are questions of fact which we review for substantial
evidence. Id. (citations omitted). Cuozzo states that, “[f]or
the purposes of this appeal, claims 10, 14, and 17 rise and
fall together.” Appellant Br. 17 n.1. Therefore, we analyze
only claim 10.
     Even under its own claim construction, Cuozzo agrees
that the disclosed mechanical embodiment with a red
colored filter is within the claim scope. In the analog
embodiment disclosed in the specification, a red filter is
superimposed on a white speedometer so that “speeds
above the legal speed limit are displayed in red . . . while
the legal speeds are displayed in white . . . .” ’074 patent
col. 5 ll. 35–37. A GPS unit tracks the vehicle’s location,
and the speed limit at that location is determined. The
red filter automatically rotates in response so that speeds
over the legal speed limit are displayed in red.
    It is a “long-established rule that ‘claims which are
broad enough to read on obvious subject matter are un-
patentable even though they also read on nonobvious
subject matter.’” Muniauction, Inc. v. Thomson Corp., 532
F.3d 1318, 1328 n.4 (quoting In re Lintner, 458 F.2d 1013,
1015 (CCPA 1972)) (internal alterations omitted). Thus if
the mechanical embodiment is obvious, claim 10 is obvi-
ous. The Board determined that the mechanical embodi-
22                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




ment was obvious over Aumayer, Evans, and Wendt. We
see no error in that determination.
    Aumayer discloses a display which shows a vehicle’s
speed and indicates the current speed limit by highlight-
ing the appropriate mark on a speed scale or by producing
a scale mark of a different length or color. Aumayer col. 1
l. 12, col. 5 ll. 19–31. Aumayer further teaches obtaining
the current location of a vehicle from an on-board
GPS, id. Abstract, col. 4 ll. 41–45, and “updating the
speed limit data stored in the vehicle by means of a radio
connection . . . by means of a data carrier,” id. col. 2 ll. 54–
57. Figure 2a provides an illustration:




Element 105 displays a maximum speed limit, and ele-
ment 107 highlights this same speed limit on the speed
scale. The pointer designated by element 102 displays the
vehicle’s current speed.
    Evans discloses a transparent plate that “bears warn-
ing indicia, for example, a special color and/or a plurality
of marks, spaces, ridges, etc. so that when the speedome-
ter dial is viewed through it, a portion of the dial repre-
senting speeds in excess of a predetermined limit are
demarked by the warning indicia.” Evans col. 2 ll. 3–8.
The plate is generally fixed but can be removed and recut
and/or repositioned in order to extend over a different
range of numbers on the dial. Figure 3 is illustrative:
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                     23




    Wendt discloses a speed limit indicator which is at-
tachable by a suction cup to the cover of a speedometer.
The indicator has a pointer which is rotatable to indicate
the current speed limit.
    Cuozzo argues that Aumayer, Evans, and Wendt do
not disclose “continuously updat[ing] the delineation of
which speed readings are in violation of the speed limit at
a vehicle's present location,” as required by claim 10. ’074
patent col. 7 ll. 6–9. In particular, Cuozzo contends that
Aumayer discloses updating speed limits associated with
a region and not with a geographic position determined by
the GPS locating device. The Board found that “it is
indisputable that Aumayer displays the speed limit for
the current location of a vehicle as determined by a GPS
receiver, and not merely the speed limit for a certain class
of road in a given region without any connection to the
vehicle’s current location.” J.A. 34. The Board’s finding is
supported by substantial evidence.
    Cuozzo also argues that there is no motivation to
combine Aumayer, Evans, and Wendt because Aumayer is
an automatic device while Evans and Wendt are manual
devices. However, “[a]pplying modern electronics to older
mechanical devices has been commonplace in recent
years.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007). It would have been
obvious to combine Aumayer, Evans, and Wendt to arrive
24                    IN RE CUOZZO SPEED TECHNOLOGIES, LLC




at the analog embodiment. Cuozzo does not contend that
any secondary considerations argue against a finding of
obviousness.
    Claim 10 would have been obvious over Aumayer, Ev-
ans, and Wendt because it encompasses the analog em-
bodiment of the invention discussed in the specification.
We need not address whether claim 10 is also obvious
over Tegethoff, Awada, Evans, and Wendt, as the Board
also concluded.
                             D
     Finally, we consider whether the Board properly de-
nied Cuozzo’s motion for leave to amend, finding that
Cuozzo’s substitute claims would enlarge the scope of the
patent. Cuozzo moved to substitute claim 10 with the
following substitute claim 21:
     A speed limit indicator comprising:
     a global positioning system receiver determining a
         vehicle’s present location, a vehicle’s present
         speed and a speed limit at the vehicle’s pre-
         sent location;
     a display controller connected to said global posi-
         tioning system receiver, wherein said display
         controller adjusts a colored display in re-
         sponse to signals indicative of the speed limit
         at the vehicle’s present location from said
         global positioning system receiver to continu-
         ously update the delineation of which speed
         readings determined by the global positioning
         system receiver are in violation of the speed
         limit at the vehicle’s present location; and
     a speedometer integrally attached to said colored
         display,
     wherein the speedometer comprises a liquid crys-
         tal display, and
     wherein the colored display is the liquid crystal
         display.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      25



J.A. 357–58.
    The statute and PTO regulation bar amendments
which would broaden the scope of the claims. 35 U.S.C.
§ 316(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). In the past, we
have construed this requirement in the context of reissues
and reexaminations. In both contexts, we have applied
the test that a claim “is broader in scope than the original
claims if it contains within its scope any conceivable
apparatus or process which would not have infringed the
original patent.” Tillotson, Ltd. v. Walbro Corp., 831 F.2d
1033, 1037 n.2 (Fed. Cir. 1987) (in the reissue context); see
In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994) (quot-
ing Tillotson, 831 F.2d at 1037 n.2) (in the reexamination
context). The same test applies in the context of IPRs.
Therefore, we inquire whether Cuozzo’s proposed substi-
tute claims would encompass any apparatus or process
that would not have been covered by the original claims. 10
The Board held that claim 21 was broadening because it
would encompass a single-LCD embodiment wherein both
the speedometer and the colored display are LCDs, which
was not within the original claims. Cuozzo argues that
the proposed claims were not broadening and instead
copied limitations from two dependent claims in the
patent.




    10   Cuozzo argues that its substitute claim is narrow-
ing because it is limited to the single-LCD embodiment
and no longer would encompass the mechanical embodi-
ment. This argument misstates the test for broadening.
“[A] claim is broadened if it is broader in any respect than
the original claim, even though it may be narrowed in
other respects.” In re Rogoff, 261 F.2d 601, 603 (C.C.P.A.
1958); see also Senju Pharm. Co., Ltd. v. Apotex Inc., 746
F.3d 1344, 1352 (Fed. Cir. 2014).
26                   IN RE CUOZZO SPEED TECHNOLOGIES, LLC




    Based on the proper construction of the phrase “inte-
grally attached,” we agree with the PTO that Cuozzo’s
proposed amendment is broadening. Cuozzo itself argues
that the motion to amend was denied solely because of the
PTO’s interpretation of “integrally attached,” and argues
only that a remand is necessary if we were to reverse the
Board’s claim construction (which we have not done).
Cuozzo admits that the Board’s construction of “integrally
attached” “excludes the single LCD embodiment of the
invention in which the speedometer includes an LCD that
is the colored display.” Appellant Br. 33. Proposed claim
21 recites “a speedometer integrally attached to said
colored display, wherein the speedometer comprises a
liquid crystal display, and wherein the colored display
is the liquid crystal display.” J.A. 358 (emphasis added).
The word “the,” emphasized in the quoted language
above, requires a single-LCD embodiment that includes
both the speedometer and the colored display in one LCD.
Because proposed claim 21 would encompass an embodi-
ment not encompassed by claim 10, it is broadening, and
the motion to amend was properly denied.
                      AFFIRMED
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

  IN RE CUOZZO SPEED TECHNOLOGIES, LLC.
            ______________________

                        2014-1301
                  ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2012-
00001.
                 ______________________

NEWMAN, Circuit Judge, dissenting.
     I respectfully dissent, for several of the panel majori-
ty’s rulings are contrary to the legislative purpose of the
Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284 (2011) (effective September 16, 2012).
    The America Invents Act established a new Inter
Partes Review system for the purpose of “providing quick
and cost effective alternatives to litigation.” H.R. Rep.
No. 112-98, pt. 1, at 48 (2011). This purpose was achieved
by providing a new adjudicatory proceeding in the admin-
istrative agency, the Patent and Trademark Office in the
Department of Commerce, whereby a newly formed
Patent Trial and Appeal Board (PTAB) serves as a surro-
gate for district court litigation of patent validity. The
goal is improved service to technology-based innovation,
and thus to the nation. The panel majority thwarts the
statutory plan in several ways.
   First, the panel majority holds that the PTAB, in con-
ducting its adversarial proceedings, need not and should
2                    IN RE CUOZZO SPEED TECHNOLOGIES, LLC




not apply the same legal and evidentiary standards as
would apply in the district court. Instead, the panel
majority authorizes and requires treating the claims of an
issued patent in the same way as pending claims in the
patent application stage, where claims are subject to the
“broadest reasonable interpretation” examination proto-
col. The panel majority thus precludes achieving review
of patent validity in Inter Partes Review comparable to
that of the district courts, where validity is determined
based on the correct claim construction, not an artificially
“broadest” construction.
    This court has approved the use of “broadest reasona-
ble interpretation” as an expedient in examination and
reexamination, but our approval was based on the unfet-
tered opportunity to amend in those proceedings. That
opportunity is not present in Inter Partes Review;
amendment of claims requires permission, and since the
inception of Inter Partes Review, motions to amend have
been granted in only two cases, although many have been
requested. 1
    The purpose of Inter Partes Review is to “convert” in-
ter partes reexamination “from an examinational proceed-
ing to an adjudicative proceeding.” H.R. Rep. No. 112-98,
pt.1, at 46. See also 157 Cong. Rec. S1111 (Mar. 2, 2011)


    1   See Andrew Williams, PTAB Update – The Board
Grants Its Second Motion to Amend (At Least in Part),
PATENT          DOCS          (Jan.       8,       2015),
http://www.patentdocs.org/2015/01/ptab-update-the-
board-grants-its-second-motion-to-amend-at-least-in-
part.html; see also Jennifer E. Hoekel, PTAB Grants First
Opposed Motion to Amend Claims – Patent Trial and
Appeal Board, THE NATIONAL LAW REVIEW (Jan. 14, 2015),
http://www.natlawreview.com/article/ptab-grants-first-
opposed-motion-to-amend-claims-patent-trial-and-appeal-
board.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                       3



(statement of Sen. Leahy) (the purpose is to “decrease[]
the likelihood of expensive litigation because it creates a
less costly, in-house administrative alternative to review
patent validity claims”). By refusing to apply to Inter
Partes Review the procedural and substantive law of the
district courts, the panel majority defeats the legislative
purpose, for the PTO tribunal cannot serve as a surrogate
for district court litigation if the PTAB does not apply the
same law to the same evidence.
     Second, and as a further departure from the legisla-
tive plan, the panel majority holds that the “final and
nonappealable” statutory provision relating to whether to
institute Inter Partes Review means that “§ 314(d) . . .
must be read to bar review of all institution decisions,
even after the Board issues a final decision.” Maj. op. at
7. Does this mean that such decisions can never be judi-
cially reviewed, even if contrary to law, even if material to
the final appealed judgment? This ruling appears to
impede full judicial review of the PTAB’s final decision,
further negating the purpose of the America Invents Act
to achieve correct adjudication of patent validity through
Inter Partes Review in the administrative agency.
     Several other aspects of the America Invents Act are
incorrectly or confusingly treated. For example, as Cuoz-
zo points out, here the PTAB decision relies on arguments
and evidence that had not been raised in the petition to
institute, although the statute requires that all argu-
ments and evidence must be presented in the petition.
The panel majority holds that “[t]he fact that the petition
was defective is irrelevant because a proper petition could
have been drafted.” Maj. op. at 8. Such broad and con-
flicting departure from the statutory provisions cannot
have been intended.
    Inter Partes Review is intended as a far-reaching and
powerful surrogate for district court validity determina-
tions. The plan is that an adversarial proceeding in the
4                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




PTO will resolve most issues of patent validity, without
the disruption and expense and delay of district court
litigation. I write in dissent because the court today
moves Inter Partes Review in directions contrary to the
language and intent of the America Invents Act, thereby
impeding its purpose to serve as a surrogate for district
court litigation.
                              I
         Inter Partes Review as surrogate for
              district court litigation
    The goal of Inter Partes Review is to rehabilitate the
innovation incentive, by reinforcing valid patents and
eliminating invalid patents through an expeditious and
cost-effective alternative to litigation, on whose results
the innovation community can rely. To this end, the new
Inter Partes Review proceedings provide for discovery,
expert testimony, depositions, subpoenas, briefs, and oral
argument by adversaries. See Abbott Labs. v. Cordis
Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013) (the America
Invents Act created an adversarial proceeding as in the
district courts, where all appropriate evidence can be
adduced).
    Inter Partes Review is limited to patent validity, for
validity is a central issue in patent litigation, and often is
dispositive of the entire litigation. To serve as a reliable
substitute for district court validity determination, the
legislation was designed to achieve the same correct
decision as would be obtained in a district court on the
same evidence and the same law. However, this court
holds that PTAB adjudication need not conform to the law
and consider the same evidence as in the courts. Instead,
the panel majority authorizes the PTAB to employ the
expedients and shortcuts that were developed for the give-
and-take of examination and reexamination, instead of
determining validity as a matter of fact and law, as re-
quired in the courts.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      5



     Although the PTAB is authorized to apply trial and
evidentiary procedures, my colleagues hold that the PTAB
need not apply the same rules of law and evidence as in
the district courts. It is critical to the success of Inter
Partes Review that it serve its purpose as a district court
surrogate, yet it is not disputed that the “broadest rea-
sonable interpretation” of claims and technology can differ
from the ultimately correct decision on the standards of
Phillips v. AWH Corp., 45 F.3d 1303 (Fed. Cir. 2005) (en
banc). This built-in discrepancy defeats the legislative
purpose of substituting administrative adjudication for
district court adjudication, for a PTAB decision based on
this artificial “broadest” standard cannot substitute for
litigation directed to the correct result.
                            A
    My colleagues argue that Inter Partes Review is simp-
ly a reexamination of the patent, and thus should be
conducted on the same broadest reasonable interpretation
as for reexamination. This argument is negated by the
heavy legislative emphasis on differences from reexami-
nation as achieved by these new procedures.
    The House Report states that the America Invents Act
“converts” Inter Partes Reexamination “from an examina-
tional proceeding to an adjudicative proceeding.” H.R.
Rep. No. 112-98, pt. 1, at 46 (2011); see also id. at 75
(describing post-grant review and Inter Partes Review as
“adjudicative systems”). The Report further explains:
        Unlike reexamination proceedings, which pro-
   vide only a limited basis on which to consider
   whether a patent should have issued, the post-
   grant review proceeding permits a challenge on
   any ground related to invalidity under section
   282. The intent of the post-grant review process
   is to enable early challenges to patents . . . . The
   Committee believes that this new, early-stage
   process for challenging patent validity . . . will
6                     IN RE CUOZZO SPEED TECHNOLOGIES, LLC




    make the patent system more efficient and im-
    prove the quality of patents and the patent sys-
    tem.
Id. at 46. It is undisputed that Congress intended that
Inter Partes Review would differ from examination or
reexamination, and that these new proceedings would be
adjudicative, like the validity proceedings in the district
courts. In the PTAB’s words, “[a]n inter partes review is
neither a patent examination nor a patent reexamina-
tion,” but is “a trial, adjudicatory in nature [which] consti-
tutes litigation.” Google Inc. v. Jongerius Panoramic
Techs., LLC, IPR2013-00191, Paper No. 50, at 4 (PTAB
Feb. 13, 2014).
    To implement the intent of the America Invents Act,
the administrative judges of the PTAB must apply the
same procedural and substantive law as the district
courts. By adopting the examination protocol of broadest
reasonable interpretation, the PTO and the panel majori-
ty negate the legislative purpose, for the PTAB tribunals
cannot serve as a surrogate for district court litigation if
the PTAB does not apply the same law to the same evi-
dence. Instead, Inter Partes Review will merely become
another mechanism for delay, harassment, and expendi-
ture, despite the Congressional warning:
    While this amendment is intended to remove cur-
    rent disincentives to current administrative pro-
    cesses, the changes made by it are not to be used
    as tools for harassment or a means to prevent
    market entry through repeated litigation and ad-
    ministrative attacks on the validity of a patent.
    Doing so would frustrate the purpose of the sec-
    tion as providing quick and cost effective alterna-
    tives to litigation.
H.R. Rep. No. 112-98, pt. 1, at 47 (2011).
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                        7



    The broadest reasonable interpretation standard is
not a rule of law, but a pragmatic protocol applied in
patentability examination and reexamination. See In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (giving
claims their broadest reasonable interpretation “serves
the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justi-
fied”); see also, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000); In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
The broadest reasonable interpretation is an examination
expedient, not a canon of construction. It serves not to
state the correct meaning of the claim, but to provide a
framework for clarification and amendment.
    Contrary to the panel majority’s theory, the differ-
ences between reexamination and the new post-grant
proceedings are very relevant to Inter Partes Review. The
standard for adjudication of validity is set forth in Phil-
lips v. AWH Corp., where claims are given their correct
construction as understood by a person of ordinary skill in
the field of the invention. Adoption of a broadest inter-
pretation renders the PTAB rulings legally unreliable,
leaving the parties to district court proceedings, whatever
the decision of the PTAB. That was not the legislative
plan.
                              B
    The panel majority holds that it is irrelevant that the
America Invents Act does not mention a “broadest rea-
sonable interpretation” standard, stating that endorse-
ment of this approach is “implicit” in the legislative
silence. Maj. op. at 16. To the contrary, the language of
the America Invents Act demonstrates that Congress did
not intend that the PTAB tribunals would construe claims
differently from the district courts.
    While the reexamination, interference, and reissue
statutes and regulations refer to the “patentability” of a
claim, 35 U.S.C. §§ 305; 135; 37 C.F.R. § 1.97, the term
8                    IN RE CUOZZO SPEED TECHNOLOGIES, LLC




“validity” is used throughout the Inter Partes Review
statute. 35 U.S.C. § 316. The distinction is carefully
made in the statute, for “validity” is the province of adju-
dication, while “patentability” applies to examination.
See In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed.
Cir. 1994) (referring to “a patentability determination in
the PTO or . . . a validity or infringement determination
in a court”). This distinction is significant.
    The America Invents Act refers to the “proper mean-
ing of a patent claim,” see 35 U.S.C. §301(d) (referring to
“the proper meaning of a patent claim in a proceeding
that is ordered or instituted pursuant to section 304, 314,
or 324”). The “proper meaning of a patent claim” is the
correct meaning. Correctness is the province of the
courts, and correctness is the purpose of Inter Partes
Review.
                             C
    The panel majority further argues that the Federal
Circuit has “approved” the “broadest reasonable interpre-
tation” standard in “a variety of [PTO] proceedings.” Maj.
op. at 13. Indeed we have, explaining in In re Yamamoto
that the expedient of broad interpretation during exami-
nation and reexamination is based on the ready ability to
amend claims, the Yamamoto court stressing this differ-
ence from judicial proceedings:
        An applicant’s ability to amend his claims to
    avoid cited prior art distinguishes proceedings be-
    fore the PTO from proceedings in federal district
    courts on issued patents. When an application is
    pending in the PTO, the applicant has the ability
    to correct errors in claim language and adjust the
    scope of claim protection as needed. This oppor-
    tunity is not available in an infringement action
    in district court.
740 F.2d at 1572.
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      9



     In routine examination and reexamination, the
amendment of a claim is a fluid, back-and-forth process
between an examiner and the applicant, who may present
proposed amendments and new claims. Reexamination is
“conducted according to the procedures established for
initial examination under the provisions of Sections 132
and 133.” 35 U.S.C. § 305. The focus of reexamination
proceedings “returns essentially to that present in an
initial examination.” In re Etter, 756 F.2d 852, 857 (Fed.
Cir. 1985). It is significant that when claims in reexami-
nation are not eligible for amendment, as when a patent
has expired, the PTO instructs examiners not to use the
broadest reasonable interpretation. MPEP § 2258 G
states:
   In a reexamination proceeding involving claims of
   an expired patent, claim construction pursuant to
   the principle set forth by the court in Phillips v.
   AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
   (words of a claim “are generally given their ordi-
   nary and customary meaning” as understood by a
   person of ordinary skill in the art in question at
   the time of the invention) should be applied since
   the expired claims are not subject to amendment.
The panel majority is incorrect in stating that Inter
Partes Review proceedings are “not materially different”
from pre-AIA proceedings with respect to the opportunity
to amend. Maj. op. at 15.
    It is reported that the ability to amend claims in Inter
Partes Review proceedings, as administered by the PTO,
is almost entirely illusory. Amendment requires permis-
sion, 37 C.F.R. § 42.20(b), and to date motions to amend
have been granted in only two cases, see supra note 1.
Patent owners are limited to “one motion to amend,” and
are presumptively limited to substituting one issued claim
for one amended claim. 37 C.F.R. § 42.221(a)(3). Addi-
tional motions to amend are allowed only “to materially
10                   IN RE CUOZZO SPEED TECHNOLOGIES, LLC




advance the settlement of a proceeding” or “as permitted
by regulations prescribed by the Director.” 35 U.S.C.
§ 316(d)(2).
     It is beyond debate that Inter Partes Review does not
allow the kind of iterative amendment process that ini-
tially justified adoption of a “broadest reasonable inter-
pretation” protocol in examination and reexamination.
                            D
    The panel majority states that the PTO is acting with-
in its rulemaking authority. The Supreme Court has
stated that “although an agency’s interpretation of the
statute under which it operates is entitled to some defer-
ence, ‘this deference is constrained by our obligation to
honor the clear meaning of a statute, as revealed by its
language, purpose, and history.’” Se. Cmty. Coll. v. Davis,
442 U.S. 397, (1979) (quoting Teamsters v. Daniel, 439
U.S. 551, 566 n. 20 (1979)); see also Muwwakkil v. Office
of Pers. Mgmt., 18 F.3d 921, 925 (Fed. Cir. 1994) (“When
an agency’s interpretation of a statute it is entrusted to
administer is contrary to the intent of Congress, as di-
vined from the statute and its legislative history, we owe
it no deference.”).
     In promulgating 37 C.F.R. § 42.300(b), the PTO de-
parted from the purpose of the America Invents Act to
create a reliable substitute for district court litigation.
The invocation of the “broadest” construction rather than
the correct construction is inconsistent with the language,
purpose and history of the America Invents Act.
Regulations must implement the statute they seek to
serve, not defeat it. See Ernst & Ernst v. Hochfelder, 425
U.S. 185, 213–14 (1976) (“The rulemaking power granted
to an administrative agency charged with the administra-
tion of a federal statute is not the power to make law.
Rather, it is the power to adopt regulations to carry into
effect the will of Congress as expressed by the stat-
ute.”). Pending potential legislative action, it is our
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                      11



obligation to interpret the statute in accordance with its
legislative purpose. 2
    In sum, the procedure whereby claims are given their
broadest reasonable interpretation instead of their correct
construction defeats the purpose of Inter Partes Review as
a surrogate for district court litigation.
                             II
        The nonappealable decision to institute
               Inter Partes Review
    The America Invents Act states that the PTO’s deci-
sion whether to institute Inter Partes Review is “final and
nonappealable.” 35 U.S.C. § 314(d). The panel majority
holds that this means that rulings in connection with the
institution of Inter Partes Review, whether review is
granted or denied, cannot be appealed to any court, either
by interlocutory appeal or on appeal of final judgment.
That is not what the statute states, or requires.
    The panel majority “conclude[s] that § 314(d) prohib-
its review of the decision to institute IPR even after a
final decision. On its face, the provision is not directed to



    2   On December 5, 2013, the House passed H.R.
3309, amending section 316(a) to state that in Inter
Partes Review “each claim of a patent shall be construed
as such claim would be in a civil action to invalidate a
patent under section 282(b), including constructing each
claim of the patent 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 . . . .” H.R. Rep. No. 113-279, at
13–14 (2013). The corresponding Senate bill was reported
to have stalled for reasons unrelated to this section. This
proposed clarification is further evidence of legislative
intent.
12                   IN RE CUOZZO SPEED TECHNOLOGIES, LLC




precluding review only before a final decision. It is writ-
ten to exclude all review of the decision whether to insti-
tute review.” Maj. op. at 6. On this conclusion, the panel
majority holds that we are barred by § 314(d) from re-
viewing compliance with the statutory limits of Inter
Partes Review.
    The majority acknowledges that situations may arise
“where the PTO has clearly and indisputably exceeded its
authority,” and suggests that possibly “mandamus may be
available to challenge the PTO’s decision to grant a peti-
tion to institute IPR after the Board’s final decision.”
Maj. op. at 8. This hint is disputed by the PTO, pointing
to the Federal Circuit’s strict requirements for manda-
mus.
     The ultimate authority regarding what a statute says
and how it applies is the judiciary. The purpose of the
“nonappealable” provision apparently is to bar interlocu-
tory proceedings and harassing filings by those seeking to
immobilize the patent or exhaust the patentee. The bar of
interlocutory appeals is routine.        However, sensitive
scrutiny is required, not blanket enlargement for all
circumstances. In Bowen v. Michigan Academy of Family
Physicians, 476 U.S. 667 (1986) the Court explained that
“[f]rom the beginning ‘our cases [have established] that
judicial review of a final agency action by an aggrieved
person will not be cut off unless there is persuasive reason
to believe that such was the purpose of Congress’.” Id. at
670 (alteration in original) (quoting Abbott Labs. v. Gard-
ner, 387 U.S. 136, 140 (1967)).
    Cuozzo points out that here the PTAB decision relies
on arguments that had not been raised in the petition for
review, contrary to the requirements of the statute. 35
U.S.C. § 312(a)(3) (the petition must identify the grounds
and evidence as to each challenged claim). The panel
majority holds that “[t]he fact that the petition was defec-
tive is irrelevant because a proper petition could have
IN RE CUOZZO SPEED TECHNOLOGIES, LLC                         13



been drafted.” Maj. op. at 8. Is this prohibited appellate
review of the nonappealable petition? Or simply a curious
departure from the fundamental rule of administrative
action, that agency decisions must be reviewable on
appeal? In Block v. Community Nutrition Institute, 467
U.S. 340 (1984), the Court elaborated on the principle of
judicial review of agency determinations. The Court
summarized:
    Whether and to what extent a particular statute
    precludes judicial review is determined not only
    from its express language, but also from the struc-
    ture of the statutory scheme, its objectives, its leg-
    islative history, and the nature of the
    administrative action involved.
Id. at 345.
    The statute requires thoughtful adjustment to the leg-
islative purpose, not heavy-handed foreclosure of all
review of anything related to the petition.
                        Conclusion
    The America Invents Act has the purpose of “provid-
ing quick and cost effective alternatives to litigation.”
H.R. Rep. No. 112-98, pt. 1, at 48 (2011). The PTO is
authorized to review the validity of issued patents in
accordance with new procedures, to reach the correct
decision, but faster, cheaper, and sooner than in the
district court. The panel majority fails to implement the
statutory purpose.
