  United States Court of Appeals
      for the Federal Circuit
                ______________________

  IN RE: CUOZZO SPEED TECHNOLOGIES, LLC,
                    Appellant
             ______________________

                      2014-1301
                ______________________

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

     ON PETITION FOR REHEARING EN BANC
             ______________________

   JOHN ROBERT KASHA, Kasha Law LLC, North Poto-
mac, MD, for appellant. Also represented by TIMOTHY M.
SALMON, Basking Ridge, NJ.

    NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor Michelle K. Lee. Also represented by SCOTT
WEIDENFELLER, ROBERT J. MCMANUS; MARK R. FREEMAN,
MELISSA N. PATTERSON, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC.

    BARBARA A. FIACCO, Foley Hoag LLP, Boston, MA, for
amici curiae 3M Company, Caterpillar Inc., Eli Lilly and
Company, General Electric Company, Glaxosmithkline
LLC, Illinois Tool Works, Inc., Johnson & Johnson, Pfizer
Inc., Procter & Gamble, Sanofi US. Also represented by
SARAH BURG, DONALD ROSS WARE.
2                      IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




    PRATIK A. SHAH, Akin, Gump, Strauss, Hauer & Feld,
LLP, Washington, DC, for amicus curiae Pharmaceutical
Research and Manufacturers of America. Also represent-
ed by ZE-WEN JULIUS CHEN, EMILY CURTIS JOHNSON.

    DAVID W. LONG, Dow Lohnes, PLLC, Washington, DC,
for amicus curiae Intellectual Property Owners Associa-
tion. Also represented by PHILIP STATON JOHNSON, John-
son & Johnson, New Brunswick, NJ; KEVIN H. RHODES,
3M Innovative Properties Company, St. Paul, MN; ELEY
OGDEN THOMPSON, Foley & Lardner LLP, Chicago, IL;
HERBERT CLARE WAMSLEY, JR., Intellectual Property
Owners Association, Washington, DC.

    EUGENE M. GELERNTER, Patterson Belknap Webb &
Tyler LLP, New York, NY, for amicus curiae New York
Intellectual Property Law Association. Also represented
by IRENA ROYZMAN, SCOTT B. HOWARD; ANTHONY FRANCIS
LO CICERO, CHARLES R. MACEDO, Amster Rothstein &
Ebenstein LLP, New York, NY.
              ___________________________

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK, MOORE,
    O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, and
                HUGHES, Circuit Judges.
    Opinion concurring in the denial of the petition for re-
    hearing en banc filed by Circuit Judge DYK, in which
      Circuit Judges LOURIE, CHEN, and HUGHES join.
    Opinion dissenting from the denial of the petition for
    rehearing en banc filed by Chief Judge PROST, Circuit
      Judges NEWMAN, MOORE, O’MALLEY, and REYNA.
    Opinion dissenting from the denial of the petition for
     rehearing en banc filed by Circuit Judge NEWMAN.
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                      3



PER CURIAM.
                       ORDER
    Appellant Cuozzo Speed Technologies, LLC, filed a
petition for rehearing en banc. A response to the petition
was invited by the court and filed by Intervenor Michelle
Lee, Director of the United States Patent and Trademark
Office. The petition and response were referred to the
panel that heard the appeal, and thereafter the petition
and response were referred to the circuit judges who are
in regular active service. A poll was requested, taken,
and failed.
   IT IS ORDERED THAT:
   (1) The petition for rehearing en banc is denied.
    (2) Absent a petition for rehearing, the mandate of the
court will issue in fifty-two days.
                                   FOR THE COURT

   July 8, 2015                    /s/ Daniel E. O’Toole
      Date                         Daniel E. O’Toole
                                   Clerk of Court
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

  IN RE: CUOZZO SPEED TECHNOLOGIES, LLC,
                    Appellant
             ______________________

                        2014-1301
                  ______________________

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

DYK, Circuit Judge, with whom LOURIE, CHEN, and
HUGHES, Circuit Judges, join, concurring in the denial of
the petition for rehearing en banc.
    The dissenting opinions’ sole arguments for eliminat-
ing the broadest reasonable interpretation standard in
inter partes review (“IPR”) proceedings are that (1) IPR
proceedings are a substitute for district court litigation, so
the district court claim construction standard should
apply; and (2) the right to amend in IPR proceedings is
limited.
    Neither argument supports setting aside the
longstanding practice of applying the broadest reasonable
interpretation standard in United States Patent and
Trademark Office (“PTO”) proceedings. The PTO has
applied the broadest reasonable interpretation standard
in a variety of proceedings for more than a century. In re
Cuozzo Speed Techs., LLC, No. 14-1301, slip op. at 12
(Fed. Cir. July 8, 2015). Interference proceedings are
2                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




adjudicatory, see Brand v. Miller, 487 F.3d 862, 867–68
(Fed. Cir. 2007), but nonetheless apply a variant of the
broadest reasonable interpretation standard, see, e.g., In
re Baxter, 656 F.2d 679, 686 (CCPA 1981).
    Nothing in the America Invents Act (“AIA”) indicates
congressional intent to change the prevailing broadest
reasonable interpretation standard. The dissents are
wholly devoid of any evidence in the legislative history
that Congress intended in the AIA to change the stand-
ard, and we must interpret the statute in light of the long
history of the use of the broadest reasonable interpreta-
tion standard in PTO proceedings. “What is of paramount
importance is that Congress be able to legislate against a
background of clear interpretive rules, so that it may
know the effect of the language it adopts.” Finley v. Unit-
ed States, 490 U.S. 545, 556 (1989), superseded by statute
on other grounds as recognized in Exxon Mobil Corp. v.
Allapattah Servs., Inc., 545 U.S. 546, 558 (2005). Far from
intending to change the standard, Congress conveyed
rulemaking authority to the PTO to prescribe regulations,
inter alia, “establishing and governing inter partes re-
view,” 35 U.S.C. § 316(a)(4), and the PTO has adopted the
broadest reasonable interpretation standard for IPR
proceedings, 37 C.F.R. § 42.100(b). In the absence of
evidence of congressional intent to abrogate the broadest
reasonable interpretation standard, we should not act to
adopt a different standard based on our own notions of
appropriate public policy. If the standard is to be changed,
that is a matter for Congress. There are pending bills
which would do just that. 1



    1   See Innovation Act, H.R. 9, 114th Cong.
§ 9(b)(1)(C) (2015) (as reported by House Judiciary Com-
mittee on June 11, 2015, with Manager’s Amendment in
the nature of a substitute); PATENT Act, S. 1137, 114th
Cong. § 11(a)(4)(A)(vii) (2015) (as reported by Senate
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                 3




Judiciary Committee on June 4, 2015, with Manager’s
Amendment in the nature of a substitute); STRONG
Patents Act of 2015, S. 632, 114th Cong. § 102(a) (2015)
(as introduced on March 3, 2015).
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

  IN RE: CUOZZO SPEED TECHNOLOGIES, LLC,
                    Appellant
             ______________________

                       2014-1301
                 ______________________

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

PROST, Chief Judge, NEWMAN, MOORE, O’MALLEY, and
REYNA, Circuit Judges, dissenting from the denial of the
petition for rehearing en banc.
    Inter partes review (“IPR”) is a new, court-like pro-
ceeding designed to adjudicate the validity of issued
patent claims. In adjudicatory proceedings, claims are
given their actual meaning, not their broadest reasonable
interpretation. For this reason, we respectfully dissent.
                             I
    The panel majority holds that “Congress implicitly
approved the broadest reasonable interpretation standard
in enacting the [America Invents Act (“AIA”)].” Revised
Panel Op. at 16. This conclusion cannot stand, as it does,
on a silent statute, a contrary legislative history, and a
line of case law that counsels an opposite result.
     First, the panel decision ignores the usual rule that,
“[o]rdinarily, ‘Congress’ silence is just that—silence.’”
Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 749
2                     IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




(1989) (quoting Alaska Airlines, Inc. v. Brock, 480 U.S.
678, 686 (1987)); see also Kimble v. Marvel Entm’t, LLC,
576 U.S. __, __ slip op. at 7 (2015) (Alito, J., dissenting)
(“[I]t is at best treacherous to find in congressional silence
alone the adoption of a controlling rule of law.”) (quoting
Girouard v. United States, 328 U.S. 61, 69 (1946)). While
there may be occasions when a court may glean congres-
sional intent from congressional inaction—for example,
when there is a settled judicial interpretation of a statu-
tory section which Congress then re-enacts without
change, see Lorillard, Div. v. Pons, 434 U.S. 575, 580
(1978); United States v. Powell, 379 U.S. 48, 55 n.13
(1964); cf. Jama v. Immigration & Customs Enforcement,
543 U.S. 335, 351 (2005)—this is not such an occasion.
There is no statutory section, reenacted by Congress,
which has been subject of settled judicial interpretation in
favor of the broadest reasonable interpretation. Nor could
there be—the AIA is a new statutory regime. Although
we have previously considered the appropriateness of the
broadest reasonable interpretation in other U.S. Patent
and Trademark Office (“PTO”) proceedings, now we are
deciding the proper interpretation of a new statute creat-
ing a wholly novel procedure. Silence has no meaning in
this context.
    Here, Congress was not legislating within an already
existing regime. To the contrary, Congress created IPRs
as a “new post-grant review procedure” that would pro-
vide “a more efficient and streamlined patent system that
will improve patent quality and limit unnecessary and
counterproductive litigation costs.” H.R. Rep. No. 112–98,
pt. 1, at 40, 45 (2011). Originally, Congress established
the reexamination process to effect this goal, but in light
of the limitations, timing, and costs of these proceedings,
Congress decided to start anew and establish new post-
grant review procedures, including IPR, in the AIA. See
id. at 45–46 (noting the problems with the reexamination
process and Congress’s attempts to remedy these issues
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                       3



with amendments before the enactment of the AIA). And
it did so by “convert[ing] inter partes reexamination from
an examinational to an adjudicative proceeding.” Id. at
46; see also id. at 68 (stating that the AIA would
“[e]stablish a new procedure, known as post-grant re-
view,” noting that this procedure “would take place in a
court-like proceeding”). As the dissent aptly summarizes:
“The post-grant proceedings established by the America
Invents Act were intended as a far-reaching surrogate for
district court validity determinations.” Revised Dissent-
ing Op. at 3. Congress’s intent in creating a completely
new type of PTO proceeding—one bearing the efficiency
and finality of district court adjudications of patent validi-
ty—could not have been clearer. The panel majority fails
to explain why Congress (or anyone else) would have
thought it desirable or necessary for the Board to construe
the claims during IPRs under a different legal framework
than the one used by district courts.
     Second, our background of existing law not only fails
to support the conclusion drawn by the panel majority, it
points to the opposite result. Specifically, we have long
explained that the broadest reasonable interpretation
standard is a useful tool, prior to patent issuance, for
clarifying the metes and bounds of an invention during
the back-and-forth between the applicant and examiner
when claims are not yet in their final form. In re Prater,
415 F.2d 1393, 1405 (CCPA 1969) (“Claims yet unpatent-
ed 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, the thought being to reduce the possi-
bility that, after the patent is granted, the claims may be
interpreted as giving broader coverage than is justified.”);
In re Buszard, 504 F.3d 1364, 1366‒67 (Fed. Cir. 2007)
(“The patent examiner and the applicant, in the give and
take of rejection and response, work toward defining the
metes and bounds of the invention to be patented.”); In re
4                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring patent
prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language
explored, and clarification imposed.”).
    It is the same give-and-take between applicant and
examiner that we have said likewise justifies use of the
broadest reasonable interpretation standard in certain
post-grant proceedings. In re Yamamoto, 740 F.2d 1569,
1572 (Fed. Cir. 1984). Indeed, when claims in post-grant
proceedings are not eligible for modification because they
have expired, the broadest reasonable interpretation
standard does not apply. In re Rambus, Inc., 753 F.3d
1253, 1256 (Fed. Cir. 2014).
    But in district court adjudications, where the appli-
cant lacks “the ability to correct errors in claim language
and adjust the scope of claim protection as needed,” the
broadest reasonable interpretation standard does not
apply. Yamamoto, 740 F.2d at 1572. Rather, a district
court “assign[s] a fixed, unambiguous, legally operative
meaning to the claim.” Chimie v. PPG Indus., Inc., 402
F.3d 1371, 1377 (Fed. Cir. 2005). The point is to arrive at
a “concise statement[] of the subject matter for which the
statutory right to exclude is secured by the grant of the
patent.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1476, 1476 (Fed. Cir. 1998); see also Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129
(2014) (“[A] patent’s claims, viewed in light of the specifi-
cation and prosecution history, [must] inform those
skilled in the art about the scope of the invention with
reasonable certainty.”). To find otherwise would ignore
the difference between the broadest reasonable interpre-
tation and what a patent actually claims. In obtaining a
patent, a patentee discloses his invention to the public in
exchange for a limited monopoly, as defined by the claims
of the patent. To invalidate those claims using a different
standard than one that considers the true meaning and
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                        5



scope of a claim would violate the bargain the patentee
struck with the public.
    IPRs should be no different. As in district court adju-
dications, the goal in IPRs is to provide an efficient and
effective vehicle for examining the validity of an issued
patent. And unlike the PTO proceedings in which we
have sanctioned the broadest reasonable interpretation
standard, IPRs do not bear the traits that justify the
broadest reasonable construction. During IPRs, there is
no back-and-forth between the patentee and examiner
seeking to resolve claim scope ambiguity; there is no
robust right to amend. To the contrary, an IPR is a
curtailed, trial-like proceeding meant to efficiently resolve
a challenge to patent validity. It may only be instituted
on limited grounds, 35 U.S.C. § 311(b), and must conclude
within one year (unless extended for six months upon a
showing of good cause), 35 U.S.C. § 316(a)(11). The
proceeding consists of a brief period of discovery, one
round of briefing by the petitioner and challenger, and an
oral hearing, before the Board issues its final decision.
During this process, the patentee is not given the right to
amend its claims, but must instead seek the permission of
the Board. 35 U.S.C. § 316(d). Even then, the patentee is
limited to “one motion to amend,” with additional motions
allowed only “to materially advance the settlement of a
proceeding” or “as permitted by regulations prescribed by
the Director.” Id. Given the absence of examinational
hallmarks justifying the broadest reasonable interpreta-
tion standard in other contexts, and the similarities to
district court litigation, it is unclear to us why the district
court standard should not apply.
    Even the panel majority acknowledges the adjudica-
tive nature and the limited amendment process of IPRs.
Revised Panel Op. at 14–16. Yet it brushes these distinc-
tions aside without substantive analysis. With respect to
adjudication, the panel majority’s sole response is to claim
that the adjudication/examination distinction is irrele-
6                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




vant, and to point to the interference proceeding as one
which is “in some sense adjudicatory” and uses “a variant
of the broadest reasonable interpretation standard.” Id.
at 16. This argument fails to address Congress’s clear
intent to equate the particular IPR proceedings at issue
here with those occurring in district court.
     With respect to amendments, the panel majority ob-
serves that “[a]lthough the opportunity to amend is
cabined in the IPR setting, it is nonetheless available.”
Id. at 15. But the court fails to explain how a “cabined”
amendment process fits within our prior case law empha-
sizing the “readily” available nature of amendments in
other proceedings in which the broadest reasonable
interpretation is appropriate. Burlington Indus., Inc. v.
Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987) (“Patent
application claims are given their broadest reasonable
interpretation during examination proceedings, for the
simple reason that before a patent is granted the claims
are readily amended as part of the examination process.”)
(emphasis added). We also find unclear the panel majori-
ty’s observation that this particular case “does not involve
any restriction on amendment opportunities that materi-
ally distinguishes IPR proceedings from their predeces-
sors in the patent statute” and that, “[i]f there are
challenges to be brought against other restrictions on
amendment opportunities as incompatible with using the
broadest reasonable interpretation standard, they must
await another case.” Revised Panel Op. at 15–16. If the
opinion means to imply that the correctness of the broad-
est reasonable interpretation standard depends on the
specific type of amendments available in a given IPR, we
find the suggestion problematic, as we do not see how the
Board can be expected to determine whether a certain
amendment restriction calls for one claim construction
standard or another.
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                        7



                              II
    Finally, the panel majority also holds that, even if
“Congress did not itself approve the broadest reasonable
interpretation standard in enacting the AIA, § 316 pro-
vides authority to the PTO to adopt the standard in a
regulation.” Id. at 17. According to the opinion, although
§ 316 does not grant the PTO the power to erect “substan-
tive statutory ‘patentability’ standards,” it nonetheless
provides enough authority for the PTO to enact a regula-
tion setting forth the standard by which claims shall be
construed. Id. at 18. Concluding that Chevron deference
therefore applies, the panel majority then decides that the
adopted standard is reasonable “not just because of its
pedigree but for context-specific reasons.” Id.
     It is far from clear to us that this is a case in which we
must defer to the PTO’s action. The panel majority bases
its conclusion on subsections (2) and (4) of § 316. In our
view, these subsections are consistent with Congress’s
previous grants of authority to prescribe procedural
regulations. Cooper Techs. Co. v. Dudas, 536 F.3d 1330,
1336 (Fed. Cir. 2008) (interpreting 35 U.S.C. § 2). Sub-
section (2) describes regulations specifying standards for
the “showing of sufficient grounds to institute a review.”
These regulations specify the burden the petitioner must
meet for an inter partes review to be instituted. See
37 C.F.R. § 42.108(c). Subsection (4) describes regulations
“establishing and governing inter partes review.” These
regulations provide for IPR’s existence and control how
the proceeding is to be conducted. Any doubts about the
scope of subsections (2) and (4) are resolved by looking to
the remaining eleven subsections of § 316, which are
distinctly procedural. Direct Mktg. Ass’n v. Brohl, 135 S.
Ct. 1124, 1132 (2015).
    The majority states that a claim construction stand-
ard falls within subsections (2) and (4) because it “affects
both the PTO’s determination of whether to institute IPR
8                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




proceedings and the proceedings after institution.” Re-
vised Panel Op. at 17. But § 316 does not provide the
authority to prescribe regulations on any issue that
“affects” decisions to institute or later proceedings. The
majority also asserts that the PTO’s broadest reasonable
interpretation regulation is the “opposite of a sharp
departure from historical practice” because the PTO has
long interpreted claims in this way. Id. at 18. Even if
this were correct, basing the PTO’s authority to prescribe
a regulation on the content of that regulation puts the
cart before the horse; the PTO’s authority to prescribe a
regulation must first be rooted in statute. FDA v. Brown
& Williamson Tobacco Corp., 529 U.S. 120, 161 (2000).
    Second, even if the regulation is properly classified as
procedural, deference is still not warranted if the PTO’s
regulation “is contrary to the intent of Congress, as di-
vined from the statute and its legislative history.”
Muwwakkil v. Office of Pers. Mgmt., 18 F.3d 921, 925
(Fed. Cir. 1994). Here, Congress intended IPRs to be a
viable alternative to district court adjudications of patent
validity. Importing the broadest reasonable interpreta-
tion into IPRs “defeats the purpose of substituting admin-
istrative adjudication for district court adjudication.”
Revised Dissenting Op. at 15.
     In any event, our joint dissent in this case does not
turn on whether or not we apply deference to the agency.
Even under the deferential Chevron framework, we would
find the PTO’s regulation unreasonable. See Michigan v.
EPA, 576 U.S. __, __ slip op. at 6 (2015) (“Even under this
deferential standard, however, ‘agencies must operate
within the bounds of reasonable interpretation.’”) (quoting
Utility Air Regulatory Grp. v. EPA, 573 U.S. __, __ (2014)
(slip op., at 16) (internal quotation marks omitted)). As
our prior cases explain, it makes perfect sense in the
course of examining a new or revised claim, as means of
clarifying the metes and bounds of an invention, that the
PTO construe the claim as broadly as it might reasonably
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                    9



be construed in subsequent enforcement efforts. But in
IPRs, as in district court litigation, an already issued
claim is being analyzed solely for the purposes of deter-
mining its validity. In this context, it makes little sense
to evaluate the claim against the prior art based on
anything than the claim’s actual meaning.
    For these reasons, we respectfully dissent from the
court’s refusal to rehear this case en banc.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

  IN RE: CUOZZO SPEED TECHNOLOGIES, LLC,
                    Appellant
             ______________________

                       2014-1301
                 ______________________

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

NEWMAN, Circuit Judge, dissenting from denial of the
petition for rehearing en banc.
    I write further in view of the extensive amicus curiae
participation in this rehearing en banc petition, repre-
senting the technology-based foundation of the national
economy. The position that the PTO, on post-issuance
review, should not apply the claim construction that is
applied by the courts, and thus need not achieve the
objectively correct determination of validity, has no de-
fender other than a majority of the Federal Circuit court.
    The loser in this debate is the nation, for the ambi-
tious plan of the America Invents Act is thwarted—a plan
to rehabilitate the patent-based innovation incentive by
creating a new and powerful adjudicatory tribunal in the
PTO, a tribunal that would apply the law reliably and
expertly, to achieve expedited and correct determination
of patent validity.
2                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




                             A
     All of the amici curiae criticize the panel majority po-
sition and urge en banc attention to this “matter of excep-
tional importance.” The brief filed by the 3M Company,
Caterpillar Inc., Eli Lilly and Company, General Electric
Company, GlaxoSmithKline LLC, Illinois Tool Works Inc.,
Johnson & Johnson, Pfizer Inc., Procter & Gamble, and
Sanofi US, states that together they “spend tens of bil-
lions of dollars annually and employ over a half million
scientists, engineers and others in the United States
alone to develop, produce, and market new products,” and
that they “collectively hold tens of thousands of patents
[and] participate extensively in patent litigation.” Amicus
Curiae Br. of 3M et al. at 1. They advise the court that
“the PTO’s decision to use the BRI Rule is inconsistent
with the AIA and sound patent policy.” Id. at 2.
    These amici “urge the Court to grant en banc review,”
and stress the importance of resolving this concern expe-
ditiously, citing the thousands of current IPR proceedings.
They state: “The lack of certainty as to the meaning (and
therefore value) of a patent is costly to the inventive
community and discourages innovation; it adversely
affects patent licensing, design-around activities, and
other critical business decisions, contrary to the goals of
the AIA.” Id. at 4. They observe that the “application of
different standards in the PTO and judicial proceedings
also means that each proceeding’s claim construction has
no estoppel effect for subsequent proceedings, further
encouraging gamesmanship,” and urge this court to
correct the PTO’s departure from congressional intent.
Id.
    The Intellectual Property Owners Association, citing
its membership of “over 200 companies and 12,000 indi-
viduals involved in the association through their compa-
nies or as inventor, author, executive, law firm or
attorney,” Br. of IPO as Amicus Curiae at 1, states that:
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                      3



“The use of BRI in IPR proceedings is rapidly undermin-
ing the public’s confidence in the patent system. The
[Cuozzo] panel’s decision upsets the settled expectation of
inventors, patentees, and all others who depend on the
patent system.” Id. The IPO urges the en banc court to
review the panel’s ruling, for “[i]nvestment decisions
relating to research and development of new inventions
and the commercialization of previously patented ones are
now being chilled.” Id. at 4.
     The Pharmaceutical Research and Manufacturers of
America reminds the court that pursuit of medical ad-
vances requires enormous investments—roughly $40-50
billion annually—“made possible by clearly defined and
predictable patent law protections.” Br. of Amicus Curiae
PhRMA at 1. The amicus describes the broadest reasona-
ble interpretation standard in the new post-grant pro-
ceedings as an issue of “particular importance.” Id.
Amicus New York Intellectual Property Law Association
reiterates that the “issue is of great importance and
should be re-heard en banc.” Amicus Curiae Br. of
NYIPLA at 4.
    The amici explain the commercial, economic, and
pragmatic implications of the majority position. They
stress the need for clarity and predictability in the law on
which commercial decisions are made, they emphasize the
legislative purpose of the America Invents Act, and ask
this en banc court to guide agency understanding of the
statute. The majority of the court appears unperturbed.
     In contrast, the legislative record of the America In-
vents Act is full of testimony in elaboration of the con-
cerns of the nation’s industries, that the system of patents
is of diminished service to industrial growth and competi-
tiveness, despite this era of scientific promise and creativ-
ity. The America Invents Act is the culmination of several
years of effort, focused on achieving stability and predict-
ability of patent validity determinations.
4                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




    The amici curiae stress the need for investment-
reliable patent rights, and the AIA’s purpose of establish-
ing this new administrative adjudicative authority. This
purpose collapses if the PTO applies a unique rule of
patent claim construction, different from the law of claim
construction that is applied in the courts. The public
interest in technological advance, and the national inter-
est in a vigorous economy served by growth, employment,
creativity, and trade, require that this court accept the
petition for en banc rehearing.
                            B
    The America Invents Act established a new PTO tri-
bunal in order to achieve rapid, efficient, and correct
resolution of issues of patent validity that heretofore
required trial in the district courts after controversy
arose. All of the amici curiae stress the importance, the
value, of this new adjudicative plan. Yet the legislative
purpose fails if the PTO applies different law than is
applied in the courts. As the amici point out, and as
current experience illustrates, instead of diminishing the
gamesmanship, delay, and burdens of patent disputes,
they are enhanced.
    This was not the legislative intent. 1 As elaborated in
my panel dissent and in today’s en banc dissent, I tabu-
late some reasons why the “broadest reasonable interpre-




    1    Corrective legislation, requiring that “each claim
of a patent shall be construed as such claim would be in a
civil action” has been enacted in bills approved by both
the House and Senate committees, but has stalled be-
cause of unrelated areas of controversy. See 2015 Patent
Reform Innovation Act, H.R. 9, 114th Cong. § 9(b)(1)(C)
(2015); Patent Act, S. 1137, 114th Cong. § 11(a)(4)(A)(vii)
(2015). Prompt resolution is reported to be unlikely.
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                      5



tation” is the improper standard for America Invents Act
post-issuance procedures:
   •   Claims of issued patents are construed the same
       way for validity as for infringement; no precedent,
       no practical reality, authorizes or tolerates a broad-
       er construction for one than the other.

   •   The broadest reasonable interpretation is an ap-
       propriate examination expedient, for it aids defini-
       tion of claim scope during prosecution, with ready
       amendment of pending claims. In contrast, in the
       AIA proceedings amendment requires permission,
       and is limited even when permitted.

   •   With PTO construction of issued claims more
       broadly than the basis on which they were granted,
       the patentee must now defend, in these AIA pro-
       ceedings, the validity of claim scope he did not ob-
       tain from the PTO during prosecution.

   •   The AIA contemplated a streamlined surrogate tri-
       bunal for determination of validity. This requires
       that the same claim construction is applied in the
       PTO as in the district courts.
   •   The public notice role of patent claims requires the
       correct claim construction, not an arbitrarily broad
       construction of undefined limits.
   •   Neither the PTO nor any judicial precedent pro-
       vides guidance as to how broad is “broadest,” or
       sets any limits to this parameter. Predictability of
       legal rights, and stability of law, are replaced by
       fuzziness and uncertainty.
   •   The AIA designed the new PTO tribunal to “review
       the validity of a patent.” It was expected that the
       PTO would apply the correct law of validity, while
6                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




      drawing on PTO expertise in technology and PTO
      experience in patent law. It cannot have been in-
      tended that the PTO would not apply the correct
      law in these new post-grant proceedings.
    The concurrence, in reinforcing denial of en banc re-
view, states that claims of issued patents have been given
their “broadest” interpretation for a hundred years, citing
patent interferences and reissues. See Concurring Op. at
1–2. Any practitioner of patent interferences knows that
the PTO, in determining conception, reduction to practice,
corroboration, diligence, experimental support, etc., did
not apply a “broadest” interpretation of anything. And
reissues are directed to correction of the patentee’s error;
the purpose is to achieve correctness, not breadth. Con-
trary to the concurrence, the question before this court is
not whether to “eliminate” BRI, but whether to impose it
on issued patents, where it has not previously reposed.
   This is a simple question, although of powerful conse-
quence. As urged by the amici curiae, it should be an-
swered correctly.
