  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.
                 ______________________

                 Decided: July 8, 2015
                ______________________

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

    NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for intervenor Michelle K. Lee. Also represented
by SCOTT WEIDENFELLER, ROBERT J. MCMANUS.
                 _____________________

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




DYK, Circuit Judge.
    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
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                       3



liquid crystal display (“LCD”). Id. col. 3 ll. 4–6, col. 6 ll.
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 location.”
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-
4                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




ans”), and 2,711,153 (“Wendt”); and/or (2) German Patent
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



    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



would improperly enlarge the scope of the claims as
construed by the Board.
    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 decision.
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).



    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




    Section 314(d) is entitled “No appeal” and provides
that “[t]he determination by the Director whether to
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-
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                     7



bility. Moreover, given that § 319 and § 141(c) already
limit appeals to appeals from final decisions, § 314(d)
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



   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




jurisdiction was only “over Hiniker’s appeal from the
[final] decision of the Board.” Id. at 1367. While the final
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


    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



relief was not available to challenge the denial of a peti-
tion for IPR. Given the statutory scheme, there was no
“‘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 or shall
not 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 overrule,
sub silentio, decades old case law. . . . It would be incon-
sistent with the role assigned to the PTO in issuing a
patent to require it to interpret claims in the same man-
ner 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); In re Prater, 415 F.2d 1393,
1404–05 (1969) (examinations); cf. Reese v. Hurst, 661
F.2d 1222, 1236 (CCPA 1981) (interferences). Applying
the broadest reasonable interpretation standard “re-
duce[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 (quoting Prat-
er, 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 the kind of longstand-
ing, consistent existing law that is present here. Astoria
Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 110
(1991); Procter & Gamble Co. v. Kraft Foods Global, 549
F.3d 842, 848–49 (Fed. Cir. 2008) (improper to presume



   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




that congress would alter the backdrop of existing law sub
silentio).
    Moreover, Congress in enacting the AIA was well
aware that the broadest reasonable interpretation stand-
ard 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 approved the existing rule of adopting the
broadest 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-
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
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                      15



     But this case does not involve any restriction on
amendment opportunities that materially distinguishes
IPR proceedings from their predecessors in the patent
statute. Section 316(d)(1) provides that a patentee may
file one motion to amend in order to “[c]ancel any chal-
lenged 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 . . . or as permitted by regulations prescribed by the
Director.” 35 U.S.C. § 316(d)(2). “A motion to amend may
be denied where” the amendment either “does not respond
to 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. Here, the
only procedural ground for rejecting the amendment that



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




Cuozzo proposed was that it enlarged the scope of the
claims, in violation of § 316(d)(3). A bar on post-issuance
broadening has long been part of pre-IPR processes for
which precedent approved use of the broadest reasonable
construction. See 35 U.S.C. §§ 251 (reissue beyond two
years), id. § 305 (reexamination). Thus, the only amend-
ment restriction at issue in this case does not distinguish
pre-IPR processes or undermine the inferred congression-
al authorization of the broadest reasonable interpretation
standard in IPRs. If there are challenges to be brought
against other restrictions on amendment opportunities as
incompatible with using the broadest reasonable interpre-
tation standard, they must await another case.
    The inference of congressional approval of the
longstanding PTO construction standard also is not
undermined by the fact that IPR may be said to be adju-
dicatory rather than an examination. The repeatedly
stated rationale for using the broadest reasonable inter-
pretation standard—that claim language can be modified
when problems are identified in the PTO, see supra note
7—does not turn on whether the PTO identifies the
problems by adjudication or by examination. Indeed,
interference proceedings are also in some sense adjudica-
tory, see Brand v. Miller, 487 F.3d 862, 867–68 (Fed. Cir.
2007) (characterizing interference proceedings as adjudi-
catory and holding that the Board’s decision be reviewed
on the record), yet interference proceedings use a variant
of the broadest reasonable interpretation standard, see
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 500 (Fed.
Cir. 1997) (“In the absence of ambiguity, it is fundamental
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))). We conclude
that Congress implicitly approved the broadest reasona-
ble interpretation standard in enacting the AIA.
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                     17



                             2
    Even if we were to conclude that Congress did not it-
self approve the broadest reasonable interpretation
standard in enacting the AIA, § 316 provides authority to
the PTO to adopt the standard in a regulation. Section
316(a)(2) provides that the PTO shall establish regula-
tions “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). 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 Techs. Co. v.
Dudas, 536 F.3d 1330, 1337 (Fed. Cir. 2008) (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 per-
missible 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 directed the
PTO in IPR proceedings to determine the “patentability”
of any “claim” put in issue. 35 U.S.C. § 318(a); see also id.
18                   IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




§§ 311(b), 314(a). Congress was silent on the subject of
how the PTO should construe the “claim,” and, if we
assume arguendo that Congress did not itself approve (or
reject) 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.
     We do not draw that conclusion from any finding that
Congress has newly granted the PTO power to interpret
substantive statutory “patentability” standards. Such a
power would represent a radical change in the authority
historically conferred on the PTO by Congress, and we
could not find such a transformation effected by the
regulation-authorizing language of § 316 any more than
we could infer a dramatic change in PTO claim interpre-
tation standards through the general language of the IPR
provisions. Nevertheless, the language of § 316 readily
covers the specific action the PTO has taken here, which
is the opposite of a sharp departure from historical prac-
tice. The PTO has merely embodied in a regulation the
approach it has uniformly applied, even without rulemak-
ing, when it is interpreting “claims” to assess patentabil-
ity. In so doing, the PTO has provided a uniform approach
to be followed by the numerous possible three-member
combinations of administrative patent judges that decide
IPR proceedings.
    The adopted standard is reasonable not just because
of its pedigree but for context-specific reasons. As dis-
cussed above, the policy rationales for the broadest rea-
sonable interpretation standard in pre-IPR examination
proceedings apply as well in the IPR context. The statute
also provides for the PTO to exercise discretion to consoli-
date an IPR with another proceeding before the PTO. See
35 U.S.C. § 315(d). The possibility of consolidating multi-
ple types of proceedings suggests a single claim construc-
tion standard across proceedings is appropriate. 37
C.F.R. § 42.221(a) reflects a permissible construction of
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                    19



the statutory language in § 316(a). Even if approval of 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.
The phrase was introduced by an amendment to claim 10
20                     IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




to overcome a rejection that the claim was anticipated
under § 102(e) by Awada. 8
     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



     8  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. 104–05.
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 connec-
tion . . . 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. 9
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.




    9    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 (CCPA
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 embodiment 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,
                    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.
    I respectfully dissent, for the panel majority’s rulings
are contrary to the Leahy-Smith America Invents Act,
Pub. L. No. 112–29, 125 Stat. 284 (2011) (effective Sep-
tember 16, 2012).
    The America Invents Act established new post-
issuance patent review systems, for the purpose of
“providing quick and cost effective alternatives to litiga-
tion.” H.R. Rep. No. 112–98, pt. 1, at 48 (2011). This
purpose is achieved by new forms of proceedings in the
Patent and Trademark Office, whereby a new adjudicato-
ry body, called the Patent Trial and Appeal Board
(PTAB), serves as a surrogate for district court litigation
of patent validity. These adjudicative proceedings in the
PTO are designed “to review the validity of a patent . . . in
a court-like proceeding.” H.R. Rep. No. 112–98, pt. 1, at 8.
The goal is improved service to technology-based innova-
tion, and thus to the national interest in creative advance
2                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




and industrial growth. The panel majority thwarts the
statutory plan in several ways.
    First, the panel majority holds that the PTAB, in con-
ducting these adversarial post-grant proceedings, need
not and should not apply the same patent claim construc-
tion as is required to be applied in the courts. Instead,
the panel majority ratifies treating the claims of an issued
patent as if they are the proposed claims in the patent
application examination stage, when proposed claims are
subject to the “broadest reasonable interpretation” exam-
ination expedient. The panel majority thus precludes
achieving PTAB adjudication of patent validity compara-
ble to that of the district courts, where validity is deter-
mined on the legally correct claim construction, not an
artificial temporary “broadest” construction. The “broad-
est” construction is designed to facilitate examination
before grant, not to confound litigation after grant.
    As a further departure from the legislative plan, the
majority holds that the “final and nonappealable” statuto-
ry provision relating to whether to institute post-grant
proceedings 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. This restraint
could bar review of information material to the final
PTAB judgment, and may in turn impede full judicial
review of the PTAB’s decision. This further diminishes
the role of the PTO as a reliable arbiter of patent validity.
    Several other aspects of the America Invents Act are
confusingly treated in the majority opinion. For example,
as Cuozzo 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 arguments and evidence must be presented in the
Petition. The panel majority states that “[t]he fact that
the petition was defective is irrelevant because a proper
petition could have been drafted.” Maj. op. at 8. Such
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                     3



casual disregard of this statutory provision cannot have
been intended, by the legislation, and sets a dubious
precedent for responsible proceedings.
    The post-grant proceedings established by the Ameri-
ca Invents Act were intended as a far-reaching surrogate
for district court validity determinations. The premise is
that an adversarial evidentiary proceeding in the PTO
can reliably resolve most issues of patent validity, without
the expense and delay of district court litigation, and
sometimes even before infringement has occurred. The
court today moves these new proceedings in directions
inimical to the content and provisions of the America
Invents Act, impeding the statutory purpose.
                             I
     PTO Post-Grant Proceedings as a Surro-
      gate for District Court Litigation
    During six years of discussion, hearings, negotiation,
and collaboration among the communities of technology-
based industry, inventors, legislators, scholars, bar asso-
ciations, and the concerned public, solution was sought to
a major problem confronting United States industrial
advance: the burgeoning patent litigation and the accom-
panying cost, delay, and overall disincentive to invest-
ment in innovation.
    The fruit of these efforts, the America Invents Act, is
a thoughtful, creative, and ambitious statute whose
cornerstone is the shift of patent validity disputes from
the courts to the expert agency that previously was con-
cerned primarily with examination for patentability.
Previously, disputes of validity of issued patents were the
exclusive province of the courts. Now, the America In-
vents Act not only authorizes the PTO to conduct litiga-
tion-type adversarial proceedings to decide patent
validity, but also authorizes such proceedings even when
there is no “controversy” under Article III.
4                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




     The premise of the America Invents Act is that these
new PTO proceedings will provide a reliable early deci-
sion, by technology-trained patent-savvy adjudicators,
with economies of time and cost. See 157 Cong. Rec.
S7413 (Nov. 14, 2011) (statement of Rep. Smith) (“The
new transitional program . . . creates an inexpensive and
speedy alternative to litigation—allowing parties to
resolve [disputes] rather than spending millions of dollars
in litigation costs.”).
     The goal is to improve the climate for investment and
industrial activity, while facilitating the removal of pa-
tents that were improvidently granted. See Changes to
Implement Transitional Program for Covered Business
Method Patents, 77 Fed. Reg. 7080, 7081 (Feb. 10, 2012)
(“The purpose . . . is to establish a more efficient and
streamlined patent system that will improve patent
quality and limit unnecessary and counterproductive
litigation costs.”). An obstacle to achieving this purpose is
the refusal of the PTO to construe patent claims in ac-
cordance with the law of claim construction that is ap-
plied in the courts—an obstacle now endorsed by the
Federal Circuit.
    Claim construction is the first step in determining the
validity of patent claims. In an adjudicatory proceeding
for issued patents, the claims must be construed in ac-
cordance with law. In establishing this new adjudicatory
system in the PTO, the record shows no debate about
whether the PTO, in deciding the validity of issued pa-
tents, should apply a different law from the law applied in
the courts. The America Invents Act plainly contemplat-
ed that the new PTO tribunal would determine validity of
issued patents on the legally and factually correct claim
construction, not on a hypothetical “broadest” expedient
as is used in examination of proposed claims in pending
applications.
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                     5



    The America Invents Act, in authorizing the PTO to
determine validity by conducting adversarial proceedings,
including discovery, depositions, witnesses, experts, briefs
and arguments, is designed to reach the correct result in
the PTO, the same correct result as in the district courts.
See H.R. Rep. No. 112–98, pt. 1, at 75 (describing these
new post-grant proceedings as “adjudicative systems”
comparable to district court validity determinations).
This legislative purpose fails when the PTO tribunal uses
a different standard of claim construction, a standard that
does not require the correct claim construction.
     The legislative record contains no support for the ma-
jority’s view that Congress intended that the new PTO
tribunal need not construe the claims of issued patents
correctly. The legislative record does not show a congres-
sional intent that issued patents should be more readily
invalidated in these PTO proceedings than in the courts,
by broadening the claims into invalidity. This PTO
procedure distorts, indeed defeats, the legislative purpose
of providing an administrative surrogate for district court
determination of patent validity.
Patent claims must be correctly construed for valid-
ity as for infringement
    The construction of patent claims, their meaning and
their scope, is the foundation of patent law. As stated in
Lighting Ballast Control LLC v. Phillips Electronics North
American Corp., “[l]egal doctrine in patent law starts with
the construction of patent claims, for the claims measure
the legal rights provided by the patent.” 744 F.3d 1272,
1282 (Fed. Cir. 2014) (vacated on other grounds). These
legal rights must be the “correct” rights, not some fuzzy
“broadest” measure.
    Patent claims are construed as a matter of law, as
limited by the specification, the prosecution history, and
the prior art. Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc). Because exclusive rights are deter-
6                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




mined thereby, claims are construed the same way for
validity as for infringement. No statute, no precedent,
authorizes or even tolerates broader construction for
validity than for infringement. It cannot have been
contemplated in the America Invents Act that instead of
applying the correct claim construction for adjudication of
validity, the PTAB would seek an undefined broadest
interpretation to the claims, and then decide the validity
of broadest claims that were never granted to the appli-
cant.
    The question is not whether a “broadest” construction
protocol has a place in the examination of pending appli-
cations, where proposed claims are readily amended in
the give-and-take of patent prosecution. However, after
the patent has issued, announcing a property right on
which the patentee and the public rely, the claims must
be construed correctly. Absent commitment to the correct
construction, this new forum for adjudication fails its
purpose of providing an effective determination of validi-
ty. This failure cannot be what the legislators and sup-
porters of the America Invents Act intended when they
authorized the PTO to establish an administrative tribu-
nal to determine patent validity through adjudicatory
process.
“Broadest reasonable interpretation” is an exami-
nation expedient, not the law of claim construction
    The broadest reasonable interpretation is authorized
for use in the examination of pending applications, as the
applicant and the examiner interact to define the inven-
tion so as to distinguish or avoid overlap with prior art.
See In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (“an
essential purpose of patent examination is to fashion
claims that are precise, clear, correct, and unambiguous.”)
Id. The purpose of construing claims broadly during
examination is to restrict or clarify the applicant’s pro-
posed claims, not to broaden them. See In re Yamamoto,
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                     7



740 F.2d 1569, 1571 (the PTO broadly interprets claims
during examination since the applicant may “amend his
claims to obtain protection commensurate with his actual
contribution to the art”) (quoting In re Prater, 415 F.2d
1393, 1404–05 (CCPA 1969)); see generally MPEP § 2111
(requiring the application of the “broadest reasonable
interpretation” to pending claims).
    Giving proposed claims their broadest reasonable in-
terpretation “serves the public interest by reducing the
possibility that claims, finally allowed, will be given
broader scope than is justified.” Yamamoto, 740 F.2d at
1571; see In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)
(the broadest interpretation “is not unfair to applicants,
because ‘before a patent is granted the claims are readily
amended as part of the examination process’”) (quoting
Burlington Indus., Inc. v. Quigg, 822 F.2d 1581, 1583
(Fed. Cir. 1987)).
    The “broadest” protocol aids the applicant and the ex-
aminer in defining claim scope during prosecution. It is
not a claim construction on which substantive legal rights
of validity or infringement are based, or are intended to
be based. In contrast, applying the broadest interpreta-
tion to issued claims in these PTO post-grant validity
determinations does not serve to restrict or clarify claims.
Instead, this activity now appears to be used by the PTAB
to broaden issued claims inappropriately, for claims can
be broadened until they read on prior art—the result
about which Cuozzo complains.
These post-grant proceedings provide no right to
amend the issued claims, and permission to amend
is restricted
    A critical difference between the standard procedure
of examination of pending applications, and these post-
grant proceedings, is the ready pre-grant availability of
amendment of the claims. Patent prosecution is a fluid
exchange between the examiner and the applicant, and
8                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




the expedient of broadest reasonable interpretation
during examination is based on, and depends on, the
applicant’s right to amend the claims. In Yamamoto the
court stressed this difference from judicial proceedings:
    An applicant’s ability to amend his claims to avoid
    cited prior art distinguishes proceedings before
    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 routine examination and reexamination, the
amendment of a claim is a back-and-forth process be-
tween an examiner and the applicant, who may present
amendments and new claims. Reexamination is “con-
ducted 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 pro-
ceedings “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 reexamination
are not eligible for amendment, as when the patent has
expired, the PTO instructs examiners not to use the
broadest reasonable interpretation.    MPEP § 2258G
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
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                    9



   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 concluding that Inter
Partes Review proceedings are not materially different
with respect to the opportunity to amend. Amid the Inter
Partes Review restrictions, 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). There is no right of amendment in
these new post-grant proceedings, and motions to amend
are rarely granted. 1 The majority trivializes this differ-
ence, curiously stating that these post grant proceedings
do not “involve any restriction on amendment opportuni-
ties that materially distinguishes IPR proceedings from
their predecessors in the patent statute.” Maj. op. at 15.
That is incorrect. Amendment in post-grant validity
proceedings is not of right, and thus far appears to be
almost entirely illusory.
    It is beyond debate that Inter Partes Review does not
allow the kind of iterative amendment process that is part
of the “broadest reasonable interpretation” protocol in
examination. The restricted role of amendment in the
America Invents Act proceedings comports with the


   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         (January       14,       2015),
http://www.natlawreview.com/article/ptab-grants-first-
opposed-motion-to-amend-claims-patent-trial-and-appeal-
board.
10                  IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




intended and expected “correct” claim construction, not
the broadest claim construction. It comports with district
court practices in adjudication, not PTO practices in
examination.
The America Invents Act designed these post-grant
review proceedings as an adjudicatory process
     The majority discounts the adjudicatory purpose of
these new PTO proceedings. The majority states that
“[t]he inference of congressional approval of the
longstanding PTO construction standard also is not
undermined by the fact that IPR may be said to be adju-
dicatory rather than an examination.” Maj. op. at 16. To
the contrary, these differences between adjudication and
examination are the fruit of six years of planning, to
produce a new adversarial system in the PTO.
    The extensive congressional criticism of the now-
discarded inter partes reexamination belies the majority’s
“inference” that Congress silently approved practices it
was not explicitly adopting. These discarded practices
resulted in lengthy delays as well as indecisive results.
See Inter Partes Reexamination Filing Data *1 (USPTO
Nov. 22, 2013), available at http://www.uspto.gov/patents/
stats/inter_parte_historical_stats_roll_up_EOY2013.pdf.
(last visited June 16, 2015) (average pendency of inter
partes reexamination was three years).
     The America Invents Act was designed to remedy
these flaws, and to provide an adjudicatory proceeding
with the benefits of adversary participation. Thus the Act
provides for discovery, witnesses, argument, and other
litigation procedures. The House Report explained that
Congress intended to “convert” inter partes reexamination
“from an examinational proceeding to an adjudicative
proceeding.” H.R. Rep. No. 112–98, pt. 1, at 46–48 (2011);
id. at 75 (describing post-grant proceedings and Inter
Partes Review as “adjudicative systems”). The House
Report states:
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                     11



    Unlike reexamination proceedings, which provide
    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 re-
    lated to invalidity under section 282. The intent
    of the post-grant review process is to enable early
    challenges to patents . . . . The Committee be-
    lieves that this new, early-stage process for chal-
    lenging patent validity . . . will make the patent
    system more efficient and improve the quality of
    patents and the patent system.
Id. at 46.
    Inter partes review under the America Invents Act is
designed to achieve the benefits of validity proceedings in
the district courts. In the PTAB’s words, “[a]n inter
partes review is neither a patent examination nor a
patent reexamination,” but is “a trial, adjudicatory in
nature [which] constitutes litigation.” Google Inc. v.
Jongerius Panoramic Techs., LLC, IPR2013-00191, Paper
No. 50, at 4 (Feb. 13, 2014). The PTO’s insistence on
applying the same artificial claim construction methodol-
ogy as in pre-grant examination is curious, indeed a
negation of the purpose and obligation of this new adjudi-
catory process.
     To conduct this adjudicatory process as the intended
surrogate for court actions, the PTAB must apply the
same law as is required of the district courts. By impos-
ing the protocol of broadest reasonable interpretation, the
PTO and the panel majority frustrate the legislative
purpose. The PTO tribunal cannot serve as a surrogate
for district court litigation if the PTAB does not apply the
correct claim construction, but deliberately applies a
“broadest” construction. The possibility of error, the
unreliability of result, cannot be salvaged by the possibil-
ity that sometimes it may not matter to the result. These
new procedures will become no more than a tactical
12                    IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




vehicle for delay, harassment, and expenditure, 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).
    The “broadest reasonable interpretation” examination
protocol has no role in adjudication of validity in the
courts. Correct adjudication of validity requires correct
claim construction, not the broadest construction. These
new PTO proceedings have no place for this inapplicable
expedient.
The public notice function of claims is defeated by a
“broadest” interpretation of claim scope
     These new proceedings are intended to provide an ef-
ficient test of the notice to the public as to what is covered
by the claims. The public interest is in the actual scope of
the claims, correctly construed—not their broadest inter-
pretation. Uniformity in claim construction is critical to
avoid “a zone of uncertainty which enterprise and experi-
mentation may enter only at the risk of infringement
claims [that] would discourage invention only a little less
than unequivocal foreclosure of the field.” Markman v.
Westview Instruments, Inc., 517 U.S. 370, 390 (1996).
    Section 112(b) of Title 35 states: “The specification
shall conclude with one or more claims particularly point-
ing out and distinctly claiming the subject matter which
the inventor or a joint inventor regards as the invention.”
As the Cuozzo situation illustrates, the broadest interpre-
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                    13



tation is in tension with the role of the specification, as
well as the prosecution history, which not only provides
information to the public about the scope and meaning of
the claims, but also is a long-recognized source of claim
interpretation and limitation. Biogen Idec, Inc. v. Glax-
oSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2012);
see Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1583 (Fed. Cir. 1996) (the prosecution history “consti-
tute[s] the public record of the patentee’s claim, a record
on which the public is entitled to rely.”) Decades of prece-
dent instruct how claims are construed and how validity
is determined when litigating over issued patents. If
these new post-grant proceedings are to serve the purpos-
es intended by the America Invents Act, the claims of
issued patents must be construed the same way in these
PTO proceedings as in the courts.
    The broadest interpretation is irreconcilable with the
traditional obligations of claim construction and public
notice. In the public interest, it is unacceptable to create
a situation whereby the tribunals charged with determi-
nation of patent validity as a matter of law, that is, the
PTAB and the district court, could validly reach a differ-
ent result on the same evidence.
Agency rulemaking authority is to implement the
statute, not to change the statute
    The America Invents Act directs the PTO to promul-
gate regulations “establishing and governing” these
proceedings “and the relationship of such review to other
proceedings under this title.” 35 U.S.C. §§ 316(a)(4),
326(a)(4). This authority relates to the “Conduct of post-
grant review” and “Conduct of inter partes review.” The
word “conduct” connotes procedure. Section 316 identifies
areas whose conduct is assigned to the PTO, including
public access to proceedings, discovery rules, and the right
to a hearing. I discern no authorization to the PTO to
14                   IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




change the law of how claims of issued patents are con-
strued. See generally H.R. Rep. No. 112–98, pt. 1, at 76.
    The panel majority states that it is merely deferring
to the PTO’s interpretation of its statutory authority.
Deference is not unlimited; the Court advises that “alt-
hough an agency’s interpretation of the statute under
which it operates is entitled to some deference, ‘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 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 divined from the
statute and its legislative history, we owe it no defer-
ence.”).
    In promulgating 37 C.F.R. § 42.300(b) to authorize
and require the broadest reasonable interpretation for
these new proceedings, the PTO departed from the pur-
pose of the America Invents Act to create a surrogate for
district court litigation. Regulations must serve the
statute they seek to implement. See Ernst & Ernst v.
Hochfelder, 425 U.S. 185, 213–14 (1976) (“The rulemaking
power granted to an administrative agency charged with
the administration 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
statute.”).
    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” is the correct meaning,
applying the law of claim construction. The new PTO
regulation authorizing “broadest reasonable interpreta-
IN RE: CUOZZO SPEED TECHNOLOGIES, LLC                  15



tion” in these post-grant proceedings defeats “the will of
Congress as expressed in the statute,” Ernst & Ernst, 425
U.S. at 214, for it defeats the purpose of substituting
administrative adjudication for district court adjudica-
tion. The curious result is that patentees are required in
these new PTO proceedings to defend the validity of
claims that are construed to be of broader scope than the
claims granted upon PTO examination.
                            II
      The decision to institute Inter Partes
                     Review
    The America Invents Act states that the PTO’s deci-
sion whether to institute review is “final and nonappeala-
ble.” 35 U.S.C. § 314(a). The majority states that “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.” Maj.
op. at 6. The statute does not mean that all information
presented with the petition to institute is barred from
consideration on appeal of the final decision.
     The stated purpose of the “final and nonappealable”
provision is to control interlocutory delay and harassing
filings. However, review is not barred of material aspects
that were decided in connection with the petition to
institute. In Bowen v. Michigan Academy of Family
Physicians, 476 U.S. 667, 670 (1986), the Court explained
that “[f]rom the beginning ‘our cases [have established]
that judicial review of a final agency action by an ag-
grieved person will not be cut off unless there is persua-
sive reason to believe that such was the purpose of
Congress’,” (alteration in original) (quoting Abbott Labs.
v. Gardner, 387 U.S. 136, 140 (1967)).
    In Block v. Community Nutrition Institute, 467 U.S.
340 (1984), the Court summarized the principle of judicial
review of agency determinations:
16                     IN RE: CUOZZO SPEED TECHNOLOGIES, LLC




     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. In this case, Cuozzo argues that the petition to
institute was improperly granted. The statute does not
preclude judicial review of whether the statute was ap-
plied in accordance with its legislated scope.
                         Conclusion
    The America Invents Act was enacted to enable the
PTO to resolve validity issues, at reduced cost and delay.
This goal is defeated by the court’s preservation of the
PTO’s new regulatory discrepancy between validity
determinations under the America Invents Act and in the
district courts. The purpose of invigorating the incentive
role of patents, by providing a faster, cheaper, and relia-
ble determination of the validity of issued patents is thus
undercut—to no benefit, and in derogation of this once-
promising legislative initiative.
