[Federal Register Volume 83, Number 90 (Wednesday, May 9, 2018)]
[Proposed Rules]
[Pages 21221-21226]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-09821]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Part 42

[Docket No. PTO-P-2018-0036]
RIN 0651-AD16


Changes to the Claim Construction Standard for Interpreting 
Claims in Trial Proceedings Before the Patent Trial and Appeal Board

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of proposed rulemaking.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') proposes changes to the claim construction standard for 
interpreting claims in inter partes review (``IPR''), post-grant review 
(``PGR''), and the transitional program for covered business method 
patents (``CBM'') proceedings before the Patent Trial and Appeal Board 
(``PTAB'' or ``Board''). In particular, the Office proposes to replace 
the broadest reasonable interpretation (``BRI'') standard for 
construing unexpired patent claims and proposed claims in these trial 
proceedings with a standard that is the same as the standard applied in 
federal district courts and International Trade Commission (``ITC'') 
proceedings. The Office also proposes to amend the rules to add that 
the Office will consider any prior claim construction determination 
concerning a term of the involved claim in a civil action, or an ITC 
proceeding, that is timely made of record in an IPR, PGR, or CBM 
proceeding.

DATES: Comment Deadline Date: The Office solicits comments from the 
public on this proposed rulemaking. Written comments must be received 
on or before July 9, 2018 to ensure consideration.

ADDRESSES: Comments should be sent by electronic mail message over the 
internet addressed to: [email protected]. Comments may also be sent 
by electronic mail message over the internet via the Federal 
eRulemaking Portal at http://www.regulations.gov. See the Federal 
eRulemaking Portal website for additional instructions on providing 
comments via the Federal eRulemaking Portal. All comments submitted 
directly to the USPTO or provided on the Federal eRulemaking Portal 
should include the docket number (PTO-P-2018-0036).
    Comments may also be submitted by postal mail addressed to: Mail 
Stop Patent Board, Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of ``Vice Chief Administrative Patent Judges Michael Tierney 
or Jacqueline Wright Bonilla, PTAB Notice of Proposed Rulemaking 
2018.''
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message to more easily 
share all comments with the public. The Office prefers the comments to 
be submitted in plain text, but also accepts comments submitted in 
searchable ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Comments not submitted electronically should be 
submitted on paper in a format that accommodates digital scanning into 
ADOBE[supreg] portable document format.
    The comments will be available for public inspection at the Patent 
Trial and Appeal Board, located in Madison East, Ninth Floor, 600 
Dulany Street, Alexandria, Virginia. Comments also will be available 
for viewing via the Office's internet website, https://go.usa.gov/xXXFW, and on the Federal eRulemaking Portal. Because comments will be 
made available for public inspection, information that the submitter 
does not desire to be made public, such as address or phone

[[Page 21222]]

number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Michael Tierney and Jacqueline Wright 
Bonilla, Vice Chief Administrative Patent Judges, by telephone at (571) 
272-9797.

SUPPLEMENTARY INFORMATION: 

Executive Summary

    Purpose: This proposed rule would amend the rules for IPR, PGR, and 
CBM proceedings that implemented provisions of the Leahy-Smith America 
Invents Act (``AIA'') providing for trials before the Office, by 
replacing the current claim construction standard for interpreting 
unexpired patent claims and claims proposed in a motion to amend, with 
an approach that is the same as the standard used by Article III 
federal courts following Phillips v. AWH Corp., 415 F.3d 1303 (Fed. 
Cir. 2005) (en banc). This proposed rule also would amend the rules to 
add that the Office will consider any prior claim construction 
determination concerning a term of the involved claim in a civil 
action, or an ITC proceeding, that is timely made of record in an IPR, 
PGR, or CBM proceeding.
    Summary of Major Provisions: The Office is using over five years of 
historical data and user experiences to further shape and improve PTAB 
trial proceedings, particularly IPR, PGR, and CBM proceedings. In this 
notice of proposed rulemaking, the Office seeks feedback and 
information in relation to the Office's proposed changes to the claim 
construction standard used for interpreting unexpired patent claims and 
claims proposed in a motion to amend. The Supreme Court of the United 
States has endorsed the Office's ability to choose an approach to claim 
construction for AIA trial proceedings. Cuozzo Speed Techs., LLC v. 
Lee, 136 S. Ct. 2131, 2144-46 (2016). Some parties have expressed a 
desire that the Office apply the same claim construction standard used 
in federal district courts, rather than the current standard of BRI. As 
part of the Office's continuing efforts to improve the trial 
proceedings, it is appropriate to revisit the claim construction 
standard applied in AIA trial proceedings involving unexpired patent 
claims and claims proposed in a motion to amend. The proposed changes 
would replace the BRI standard with an approach that would be 
consistent with the claim construction standard used in federal 
district courts. The proposed changes also would be consistent with the 
Office's current approach for interpreting claims in an expired patent. 
See Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1279 
(Fed. Cir. 2017) (noting that ``[t]he Board construes claims of an 
expired patent in accordance with Phillips . . . and [u]nder that 
standard, words of a claim are generally given their ordinary and 
customary meaning'').
    Costs and Benefits: This rulemaking is not economically 
significant, and is not significant, under Executive Order 12866 (Sept. 
30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and 
Executive Order 13422 (Jan. 18, 2007).

Background

    On September 16, 2011, the AIA was enacted into law (Pub. L. 112-
29, 125 Stat. 284 (2011)), and within one year, the Office implemented 
rules to govern Office practice for AIA trials, including IPR, PGR, 
CBM, and derivation proceedings pursuant to 35 U.S.C. 135, 316 and 326 
and AIA 18(d)(2). See Rules of Practice for Trials Before the Patent 
Trial and Appeal Board and Judicial Review of Patent Trial and Appeal 
Board Decisions, 77 FR 48612 (Aug. 14, 2012); Changes to Implement 
Inter Partes Review Proceedings, Post-Grant Review Proceedings, and 
Transitional Program for Covered Business Method Patents, 77 FR 48680 
(Aug. 14, 2012); Transitional Program for Covered Business Method 
Patents--Definitions of Covered Business Method Patent and 
Technological Invention, 77 FR 48734 (Aug. 14, 2012). Additionally, the 
Office published a Patent Trial Practice Guide to advise the public on 
the general framework of the regulations, including the structure and 
times for taking action in each of the new proceedings. See Office 
Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012).
    Previously, in an effort to gauge the effectiveness of the rules 
governing AIA trial proceedings, the Office led a nationwide listening 
tour in April and May of 2014. During the listening tour, the Office 
solicited feedback on how to make the AIA trial proceedings more 
transparent and effective by adjusting the rules and guidance to the 
public where necessary. To elicit even more input, in June of 2014, the 
Office published a Request for Comments in the Federal Register and, at 
public request, extended the period for receiving comments to October 
16, 2014. See Request for Comments on Trial Proceedings Under the 
America Invents Act Before the Patent Trial and Appeal Board, 79 FR 
36474 (June 27, 2014) (``Request for Comments''). The Request for 
Comments asked seventeen questions on ten broad topics, including a 
general catchall question, to gather public feedback on any changes to 
the AIA trial proceedings that might be beneficial. See Request for 
Comments, 79 FR at 36476-77.
    Upon receiving comments from the public and carefully reviewing the 
comments, the Office published two final rules in response to the 
public feedback with respect to the AIA trial proceedings. In the first 
final rule, the Office changed the existing rules, among other things, 
to: (1) Increase the page limit for Patent Owner's motion to amend by 
ten pages and allow a claims appendix to be filed with the motion; and 
(2) increase the page limit for Petitioner's reply to Patent Owner's 
response by ten pages. Amendments to the Rules of Practice for Trials 
Before the Patent Trial and Appeal Board, 80 FR 28561 (May 19, 2015). 
In the second final rule, the Office changed the existing rules to: (1) 
Allow new testimonial evidence to be submitted with a patent owner's 
preliminary response; (2) allow a claim construction approach that 
emulates the approach used by a district court for claims of patents 
that will expire before entry of a final written decision; (3) replace 
page limits with word count limits for major briefing; and (4) add a 
Rule 11-type certification for papers filed in a proceeding. Amendments 
to Rules of Practice for Trials Before the Patent Trial and Appeal 
Board, 81 FR 18750 (April 1, 2016).

Claim Construction Standard

    The Board currently construes unexpired patent claims and proposed 
claims in AIA trial proceedings using the BRI standard, as directed by 
37 CFR 42.100(b), 42.200(b), and 42.300(b) (``A claim in an unexpired 
patent that will not expire before a final written decision is issued 
shall be given its broadest reasonable construction in light of the 
specification of the patent in which it appears.''). The BRI standard 
differs from the standard used in federal district courts and the ITC, 
which construe patent claims in accordance with the principles that the 
United States Court of Appeals for the Federal Circuit articulated in 
Phillips.
    However, although the BRI standard is consistent with longstanding 
agency practice, the fact that the Office uses a claim construction 
standard that is different from that used by federal district courts 
and the ITC means that decisions construing the same or similar claims 
in those fora may be different from those in AIA trial proceedings and 
vice versa. Minimizing differences between claim construction standards 
used in the various fora could lead to greater uniformity and 
predictability of the patent grant. In addition, using the

[[Page 21223]]

same standard in the various fora could help increase judicial 
efficiency overall. One study found that 86.8% of patents at issue in 
AIA trial proceedings also have been the subject of litigation in the 
federal courts. Saurabh Vishnubhakat, Arti K. Rai & Jay P. Kesan, 
Strategic Decision Making in Dual PTAB and District Court Proceedings, 
31 Berkeley Tech. L.J. 45 (2016), https://ssrn.com/abstract=2731002. 
Thus, the high percentage of overlap between AIA trial proceedings and 
district court litigation favors using a claim construction standard in 
AIA trials that is consistent with the standard used by federal 
district courts and the ITC.
    Having AIA trial proceedings use the same claim construction 
standard that is applied in federal district courts and ITC proceedings 
also addresses the concern that potential unfairness could result from 
using an arguably broader standard in AIA trial proceedings. According 
to some patent owners, the same claim construction standard should 
apply to both validity (or patentability) determination and 
infringement determination. Because the BRI standard potentially reads 
on a broader universe of prior art than does the Phillips standard, a 
patent claim could be found unpatentable in an AIA trial on account of 
claim scope that the patent owner would not be able to assert in an 
infringement proceeding. For example, even if a competitor's product 
would not be found to infringe a patent claim if it was sold after the 
patent's effective filing date, the same product nevertheless could 
constitute invalidating prior art if publicly sold before the patent's 
effective filing date.
    The Office's goal is to implement a fair and balanced approach, 
providing greater predictability and certainty in the patent system. 
The Office has carefully considered ``the effect of [the proposed] 
regulation on the economy, the integrity of the patent system, the 
efficient administration of the Office, and the ability of the Office 
to complete timely the proceedings in promulgating regulations.'' 35 
U.S.C. 316(b) and 326(b). Under 35 U.S.C. 316(a)(4) and 326(a)(4), the 
Office must prescribe regulations establishing and governing IPR, PGR, 
and CBM proceedings and the relationship of such review to other 
proceedings, including civil actions to invalidate a patent under 35 
U.S.C. 282(b). Congress intended these administrative trial proceedings 
to provide ``quick and cost effective alternatives'' to litigation in 
the courts. H.R. Rep. No. 112-98, pt. 1, at 48 (2011), as reprinted in 
2011 U.S.C.C.A.N. 67, 78; see also id. at 40 (AIA ``is designed to 
establish a more efficient and streamline patent system that will 
improve patent quality and limit unnecessary and counterproductive 
litigation costs.''). The claim construction standard could be outcome 
determinative. PPC Broadband, Inc. v. Corning Optical Comm'ns RF, LLC, 
815 F.3d 734, 740-42 (Fed. Cir. 2016) (noting that ``[t]his case hinges 
on the claim construction standard applied--a scenario likely to arise 
with frequency''); see also Rembrandt Wireless Techs., LP v. Samsung 
Elecs. Co., 853 F.3d 1370, 1377 (Fed. Cir. 2017) (noting that ``the 
Board in IPR proceedings operates under a broader claim construction 
standard than the federal courts''); Google LLC v. Network-1 Techs., 
Inc.. No. 2016-2509, 2018 WL 1468370, at *5 (Fed. Cir. Mar. 26, 2018) 
(nonprecedential) (holding that ``[i]n order to be found reasonable, it 
is not unnecessary that a claim be given its correct construction under 
the framework laid out in Phillips.''). Using the same claim 
construction standard as the standard applied in federal district 
courts would ``seek out the correct construction--the construction that 
most accurately delineates the scope of the claim invention--under the 
framework laid out in Phillips.'' PPC Broadband, 815 F.3d at 740-42.
    In this notice of proposed rulemaking, the Office proposes to 
change the relevant rules to provide that a patent claim, or a claim 
proposed in a motion to amend, shall be construed using the same claim 
construction standard that would be used to construe such claim in a 
civil action to invalidate a patent under 35 U.S.C. 282(b), including 
construing the claim in accordance with the ordinary and customary 
meaning of such claim as understood by one of ordinary skill in the art 
and the prosecution history pertaining to the patent. This proposed 
change would replace the BRI standard for construing unexpired patent 
claims and proposed claims in IPR, PGR, and CBM proceedings with an 
approach that follows the framework set forth in Phillips.
    Under the proposed approach, the Office would construe patent 
claims and proposed claims based on the record of the IPR, PGR, or CBM 
proceeding, taking into account the claim language itself, 
specification, and prosecution history pertaining to the patent. The 
Office would apply the principles that the Federal Circuit articulated 
in Phillips and its progeny. For example, claim construction begins 
with the language of the claims. Phillips, 415 F.3d at 1312-14. The 
``words of a claim are generally given their ordinary and customary 
meaning,'' which is ``the meaning that the term would have to a person 
of ordinary skill in the art in question at the time of the invention, 
i.e., as of the effective filing date of the patent application.'' Id. 
at 1212-1313. The specification is ``the single best guide to the 
meaning of a disputed term and . . . acts as a dictionary when it 
expressly defines terms used in the claims or when it defines terms by 
implication.'' Id. at 1321. Although the prosecution history ``often 
lacks the clarity of the specification and thus is less useful for 
claim construction purposes,'' it is another source of intrinsic 
evidence that can ``inform the meaning of the claim language by 
demonstrating how the inventor understood the invention and whether the 
inventor limited the invention in the course of prosecution, making the 
claim scope narrower than it would otherwise be.'' Id. at 1317. 
Extrinsic evidence, such as expert testimony and dictionaries, may be 
useful in educating the court regarding the field of the invention or 
helping determine what a person of ordinary skill in the art would 
understand claim terms to mean. Id. at 1318-19. However, extrinsic 
evidence in general is viewed as less reliable than intrinsic evidence. 
Id.
    Additionally, consistent with Phillips and its progeny, the 
doctrine of construing claims to preserve their validity would apply to 
AIA trials. Phillips, 415 F.3d at 1327-28. As the Federal Circuit 
recognized in Phillips, however, this doctrine is ``of limited 
utility.'' Id.
    The Court has not applied that doctrine broadly, and has 
``certainly not endorsed a regime in which validity analysis is a 
regular component of claim construction.'' Id. at 1327. The doctrine of 
construing claims to preserve their validity has been limited to cases 
in which ``the court concludes, after applying all the available tools 
of claim construction, that the claim is still ambiguous.'' Id. 
(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. 
Cir. 2004)). Moreover, the Federal Circuit ``repeatedly and 
consistently has recognized that courts may not redraft claims, whether 
to make them operable or to sustain their validity.'' Rembrandt Data 
Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011); see also 
MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1332 (Fed. 
Cir. 2007) (noting that ``validity construction should be used as a 
last resort, not first principle'').
    The prosecution history taken into account would be the prosecution 
history that occurred previously at the USPTO, including before an 
examiner during examination, reissue,

[[Page 21224]]

reexamination, IPR, PGR, and CBM proceedings. This would also include 
prosecution before an examiner in a related application where relevant 
(Trading Technologies Intern., Inc. v. Open E Cry, LLC, 728 F.3d 1309 
(Fed. Cir. 2013)) and any argument made on appeal of a rejection before 
the grant of the patent for which review is sought, as those arguments 
are before the examiner when the decision to allow an application is 
made (See TMC Fuel Injection System, LLC v. Ford Motor Company, 682 
Fed. Appx. 895 (Fed. Cir. 2017)).
    During an AIA trial proceeding, the patent owner may file a motion 
to amend an unexpired patent claim to propose a reasonable number of 
substitute claims, but the proposed claims ``may not enlarge the scope 
of the claims of the patent or introduce new matter.'' 35 U.S.C. 316(d) 
and 326(d); 37 CFR 42.121(a)(2) and 42.221(a)(2); see also Aqua Prods., 
Inc. v. Matal, 872 F.3d 1290, 1306 (noting that ``[t]he patent owner 
proposes an amendment that it believes is sufficiently narrower than 
the challenged claim to overcome the grounds of unpatentability upon 
which the IPR was instituted''). Among other things, having the same 
claim construction standard for both the original patent claims and 
proposed claims would reduce the potential for inconsistency in the 
interpretation of the same or similar claim terms.
    In addition, the Office intends that any proposed rule changes 
adopted in a final rule would be applied to all pending IPR, PGR, and 
CBM proceedings before PTAB.
    In light of the foregoing considerations, the Office requests input 
from the public on the proposed rule changes in this notice of proposed 
rulemaking and on how the Office should implement the changes if 
adopted.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 42, is proposed 
to be amended as follows:
    Sections 42.100, 42.200, and 42.300: Each of Sec. Sec.  42.100(b), 
42.200(b), and 42.300(b) is proposed to be amended to replace the first 
sentence with the following: a claim of a patent, or a claim proposed 
in a motion to amend, ``shall be construed using the same claim 
construction standard that would be used to construe such claim in a 
civil action to invalidate a patent under 35 U.S.C. 282(b), including 
construing the claim in accordance with the ordinary and customary 
meaning of such claim as understood by one of ordinary skill in the art 
and the prosecution history pertaining to the patent.'' This proposed 
revision would replace the BRI standard for construing unexpired patent 
claims and proposed claims during an IPR, PGR, or CBM proceeding with a 
standard that is the same as the standard applied in federal district 
courts and ITC proceedings. As discussed above, the Office would apply 
the principles that the Federal Circuit articulated in Phillips and its 
progeny. The Office would construe patent claims and proposed claims 
based on the record of the IPR, PGR, or CBM proceeding, taking into 
account the claim language itself, specification, and prosecution 
history pertaining to the patent, as well as relevant extrinsic 
evidence, all as in prevailing jurisprudence of Article III courts. The 
prosecution history taken into account would be the prosecution history 
that occurred previously in proceedings at the USPTO prior to the IPR, 
PGR, or CBM proceeding at issue, including in another IPR, PGR, or CBM 
proceeding, or before an examiner during examination, reissue, and 
reexamination.
    The Office has considered using different claim construction 
standards for IPR, PGR, and CBM proceedings, but, for consistency, the 
Office proposes the same claim construction to be applied in all IPR, 
PGR, and CBM proceedings.
    Each of Sec. Sec.  42.100(b), 42.200(b), and 42.300(b) also is 
proposed to be amended to add the sentence ``Any prior claim 
construction determination concerning a term of the claim in a civil 
action, or a proceeding before the International Trade Commission, that 
is timely made of record in the . . . proceeding will be considered.'' 
Under this proposed provision, the Office would consider any prior 
claim construction determination in a civil action or ITC proceeding if 
a federal court or the ITC has construed a term of the involved claim 
previously using the same standard, and the claim construction 
determination has been timely made of record in the IPR, PGR, or CBM 
proceeding.
    Each of Sec. Sec.  42.100(b), 42.200(b), and 42.300(b) further is 
proposed to be amended to delete the second and third sentences, 
eliminating the procedure for requesting a district court-type claim 
construction approach for a patent expiring during an IPR, PGR, or CBM 
proceeding. Such a procedure would not be needed should the Office 
adopt the same claim construction standard, as proposed, for construing 
claims of unexpired patents as well as for construing claims of expired 
patents in an IPR, PGR, or CBM proceeding.

Rulemaking Considerations

    A. Administrative Procedure Act (APA): This proposed rule would 
revise the rules relating to Office trial practice for IPR, PGR, and 
CBM proceedings. The changes being proposed in this notice of proposed 
rulemaking would not change the substantive criteria of patentability. 
These proposed changes involve rules of agency procedure and 
interpretation. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 
1204 (2015) (Interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers.'' 
(citation and internal quotation marks omitted)); Bachow Commc'ns, Inc. 
v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an 
application process are procedural under the Administrative Procedure 
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 
2001) (rules for handling appeals were procedural where they did not 
change the substantive requirements for reviewing claims); Nat'l Org. 
of Veterans' Advocates, Inc. v. Sec'y of Veterans Affairs, 260 F.3d 
1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a 
statute is interpretive); JEM Broad. Co. v. F.C.C., 22 F.3d 320, 328 
(D.C. Cir. 1994) (rules are not legislative because they do not 
``foreclose effective opportunity to make one's case on the merits'').
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See 
Perez, 135 S. Ct. at 1206 (Notice-and-comment procedures are required 
neither when an agency ``issue[s] an initial interpretive rule'' nor 
``when it amends or repeals that interpretive rule.''); Cooper Techs. 
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 
U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice and 
comment rulemaking for ``interpretative rules, general statements of 
policy, or rules of agency organization, procedure, or practice'') 
(quoting 5 U.S.C. 553(b)(3)(A)).
    The Office, nevertheless, is publishing this proposed rule for 
comment to seek the benefit of the public's views on the Office's 
proposed changes to the claim construction standard for reviewing 
patent claims and proposed claims in AIA trial proceedings before the 
Board.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Deputy General Counsel for General Law of the United States Patent 
and Trademark Office has certified to the Chief Counsel for Advocacy of 
the Small Business Administration that changes proposed

[[Page 21225]]

in this notice of proposed rulemaking would not have a significant 
economic impact on a substantial number of small entities. See 5 U.S.C. 
605(b).
    The changes proposed in this notice of proposed rulemaking are to 
revise certain trial practice procedures before the Board. Any 
requirements resulting from these proposed changes are of minimal or no 
additional burden to those practicing before the Board.
    For the foregoing reasons, the proposed changes in this notice of 
proposed rulemaking would not have a significant economic impact on a 
substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This proposed rule is not expected to be an 
Executive Order 13771 regulatory action because this proposed rule is 
not significant under Executive Order 12866.
    F. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the rule and other required information to the United States 
Senate, the United States House of Representatives, and the Comptroller 
General of the Government Accountability Office. The changes in this 
proposed rule are not expected to result in an annual effect on the 
economy of 100 million dollars or more, a major increase in costs or 
prices, or significant adverse effects on competition, employment, 
investment, productivity, innovation, or the ability of United States-
based enterprises to compete with foreign-based enterprises in domestic 
and export markets. Therefore, this proposed rule is not a ``major 
rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The proposed changes set 
forth in this rulemaking do not involve a Federal intergovernmental 
mandate that will result in the expenditure by State, local, and tribal 
governments, in the aggregate, of 100 million dollars (as adjusted) or 
more in any one year, or a Federal private sector mandate that will 
result in the expenditure by the private sector of 100 million dollars 
(as adjusted) or more in any one year, and will not significantly or 
uniquely affect small governments. Therefore, no actions are necessary 
under the provisions of the Unfunded Mandates Reform Act of 1995. See 2 
U.S.C. 1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501-3549) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This proposed rule involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
This rulemaking does not add any additional information requirements or 
fees for parties before the Board. Therefore, the Office is not 
resubmitting information collection packages to OMB for its review and 
approval because the revisions in this rulemaking do not materially 
change the information collections approved under OMB control number 
0651-0069.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to, a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 42

    Administrative practice and procedure, Inventions and patents.
    For the reasons set forth in the preamble, the Office proposes to 
amend part 42 of title 37 of the Code of Federal Regulations as 
follows:

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
1. The authority citation for 37 CFR part 42 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 
316, and 321-326; Public Law 112-29, 125 Stat. 284; and Pub. L. 112 
274, 126 Stat. 2456.

0
2. Amend Sec.  42.100 by revising paragraph (b) to read as follows:


Sec.  42.100   Procedure; pendency.

* * * * *

[[Page 21226]]

    (b) In an inter partes review proceeding, a claim of a patent, or a 
claim proposed in a motion to amend under Sec.  42.121, shall be 
construed using the same claim construction standard that would be used 
to construe such claim in a civil action to invalidate a patent under 
35 U.S.C. 282(b), including construing the claim in accordance with the 
ordinary and customary meaning of such claim as understood by one of 
ordinary skill in the art and the prosecution history pertaining to the 
patent. Any prior claim construction determination concerning a term of 
the claim in a civil action, or a proceeding before the International 
Trade Commission, that is timely made of record in the inter partes 
review proceeding will be considered.
* * * * *
0
3. Amend Sec.  42.200 by revising paragraph (b) to read as follows:


Sec.  42.200   Procedure; pendency.

* * * * *
    (b) In a post-grant review proceeding, a claim of a patent, or a 
claim proposed in a motion to amend under Sec.  42.221, shall be 
construed using the same claim construction standard that would be used 
to construe such claim in a civil action to invalidate a patent under 
35 U.S.C. 282(b), including construing the claim in accordance with the 
ordinary and customary meaning of such claim as understood by one of 
ordinary skill in the art and the prosecution history pertaining to the 
patent. Any prior claim construction determination concerning a term of 
the claim in a civil action, or a proceeding before the International 
Trade Commission, that is timely made of record in the post-grant 
review proceeding will be considered.
* * * * *
0
4. Amend Sec.  42.300 by revising paragraph (b) to read as follows:


Sec.  42.300   Procedure; pendency.

* * * * *
    (b) In a covered business method patent review proceeding, a claim 
of a patent, or a claim proposed in a motion to amend under Sec.  
42.221, shall be construed using the same claim construction standard 
that would be used to construe such claim in a civil action to 
invalidate a patent under 35 U.S.C. 282(b), including construing the 
claim in accordance with the ordinary and customary meaning of such 
claim as understood by one of ordinary skill in the art and the 
prosecution history pertaining to the patent. Any prior claim 
construction determination concerning a term of the claim in a civil 
action, or a proceeding before the International Trade Commission, that 
is timely made of record in the covered business method patent review 
proceeding will be considered.
* * * * *

    Dated: May 3, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property andDirector of 
the United States Patent and Trademark Office.
[FR Doc. 2018-09821 Filed 5-8-18; 8:45 am]
 BILLING CODE 3510-16-P