Joinder Dispute Shelved by CAFC

The stay of the VirnetX IPR only lasted a little over a week.  As a reminder, the VirnetX writ of mandamus was filed with the Federal Circuit on March 4th.  The writ argued that the joinder exception of 315(b) is applicable only to timely filed petitions in which the request for joinder occurs outside of the 12-month window. That is, the joinder exception does not permit petitioners that have already missed their 12-month window to remedy the problem via joinder with another party’s proceeding.

Today, the Court issued its Order denying relief without prejudice to raise the issue in any subsequent appeal from the PTAB. (here)

Opposition briefings, Reply and amicus filings of earlier this week are found below:

USPTO
Apple
VirnetX
Mangrove
Bio (amicus)

March PTAB-Related CLE

Next Monday, the most widely attended post-grant program of the year returns, the Practicing Law Institute’s USPTO Post-Grant Patent Trials 2016.  I am pleased to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. These day-long, CLE programs are always the highlight of the CLE year.  For those unable to make the NYC program on Monday, please consider the webcast of March 31st. (Register here)
Mar. 14, 2016 New York, NY
March 31st San Francisco, CA (webcast available)

(The PatentsPostGrant.com free monthly webinar directed to Administrative Procedure Act (APA) will be rescheduled for April.  Details to come.)

Scott McKeown & Chico Gholz

No “Iterative” or “Unfettered” Amendment Process in Patent Interference

The petitioner briefing to date in Cuozzo Speed Technologies, LLC v. Lee (No. 15-446; S.Ct) emphasizes the “examinational” application of the USPTO’s broadest reasonable interpretation (BRI).  The briefing argues that since PTAB trials are “adjudicative” as opposed to “examinational,” BRI could not have been contemplated by Congress for adjudicative proceedings (since, it is argued, that such adjudicative proceedings do not provide the same degree of amendment opportunity as examinational proceedings).  Yet, absent from the petitioner’s opening brief, save a single footnote, footnote 6, is any acknowledgement  that patent interference is an adjudicative proceeding that has applied BRI for decades to both involved applications and patents — and also limits amendment options to a motion process — just like Inter Partes Review (IPR).

That amending in patent interference operates in the same manner as AIA trials should hardly be surprising given that the AIA trial rules were built upon the existing patent interference framework.  Can this decades-old, adjudicatory framework, that both uses BRI and requires amendment by motion, be distinguished by Cuozzo?

In footnote 6 of Cuozzo’s Opening Brief (here), it is suggested that BRI is acceptable in interference because “a patentee may ‘narrow its claims by filing an application to reissue the patent [and] request that the reissue application be added to the interference’,” citing Bamberger v. Cheruvu, 55 U.S.P.Q.2d 1523, 1526 (B.P.A.I. 1998) (non-precedential).  In other words, parties to an interference (whether they are in the interference on a patent or in the interference on an application) have an unfettered right to amend their claims by seeking patent reissue.  Setting aside this overly simplistic characterization for a moment, one might suggest the same patent reissue option to Cuozzo as an avenue to “unfettered” amendment options.

First, in interferences one doesn’t actually amend claims in an involved application in the typical manner of a patent reissue.  Rather, one substitutes or adds different claims by motion under 37 C.F.R. § 41.121(a)(i), 37 C.F.R. § 41.208(a)(2), and Standing Order 208.3.1. See Standing Order 208.5.2. More significantly, as evidenced yesterday in Bamberg v. Dalvey (Fed. Cir. March 9, 2016), such motions to amend are not entered as a matter of right, and are not uniformly granted. (In Bamberg, (here) the motion was denied because the movant didn’t comply with the rules governing such motions, and the Federal Circuit affirmed.)

Second, leave to file an application to reissue a patent involved in an interference and to have the reissue application added to the interference must itself be sought on motion under 37 C.F.R. $ 41.121(a)(i), 37 C.F.R. 41.208(a)(2), and Standing Order 208.5.1, and such motions are also not uniformly granted. Moreover, even if such a motion is granted, one doesn’t automatically get the right to present as many new claims as one desires. See generally Gholz, What to Do if the APJ Limits the Number of Claims to be Added to a Patent or an Application in Interference, 18 Intellectual Property Today No. 4 at page 26 (2011).

It is expected that these misunderstandings will be corrected in the Respondent briefing in the weeks ahead.

Patentee Argues Joinder Statute Does Not Excuse Late IPR Petitions

There has been a fair amount of controversy regarding issue joinder practices at the PTAB.  But, to date, the language of 315(b) that seemingly excuses late IPR petition filings has been taken at face value.  That is, while 315(b) limits initiation of a an IPR to within 12 months of service of a complaint for infringement of the subject patent, the last sentence explains that “the time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”

In a writ of mandamus filed with the Federal Circuit last week, the exception of 315(b) is argued as applicable only to timely filed petitions in which the request for joinder occurs outside of the 12-month window. In other words, the exception does not permit petitioners that have already missed their 12-month window to remedy the problem via joinder.

The writ stems from a dispute between patentee VirnetX Inc., and Apple over VirnetX patents 6,502,135 and 7,490,151. Five years prior (before the AIA was enacted) VirnetX sued Apple for infringement of the two patents.  Apple was unsuccessful in invalidating these patents in previous reexamination proceedings, and IPR did not yet exist.  So, when third party was able to successfully initiate IPRs against the VirnetX patents, Apple sought joinder. The PTAB granted joinder based on the exception to 315(b).

In its writ (here), VirnetX presented the dispute as follows:

Whether the Patent Trial and Appeal Board impermissibly exceeded its statutory authority by joining a time-barred entity to an existing inter partes review proceeding, in disregard of the unambiguous timing requirement of 35 U.S.C. § 315(b) and the corresponding requirement of 35 U.S.C. § 315(c) that a joinder request must be predicated on a timely filed petition?

VirnetX argues that the timing exception of 315(b) applies only to “requests for joinder,” and that the language of  joinder statute 315(c) still requires a “properly filed” petition.”

Not surprisingly given its historic practices, the PTAB sided with Apple that VirnetX’s interpretation of section 315(b) would render its second sentence a legal nullity.  In other words, under VirnetX’s interpretation, section 315(b)’s exemption would never apply, as no petition filed more than a year after service could ever be the basis of participation in any proceeding.

VirnetX counters in its writ that 315(b) would apply in circumstances where a petition seeking IPR is timely filed before the one-year deadline, but a request for joinder is filed after that deadline.  The problem with this argument is 315(b) relates to the timing of a petition filing, not a motion that would be perfectly appropriate if the petition were timely filed in the first instance.  The only timing requirement for a motion for joinder is that it be sought within 30 days of institution.

The CAFC has temporarily stayed the IPR, with briefing to conclude next week.  Order (here)

TTAB Vacates Precedential Decision By Court Order….PTAB Decisions Next?

in 2013 the Trademark Trial & Appeal Board (TTAB) issued  a precedential decision in a trademark opposition between the Board of Trustees of the University of Alabama et al v. William Pitts, Jr. & Christopher Blackburn. In the decision, the TTAB dismissed the opposition of the University against a mark for a logo with a houndstooth pattern with the words “Houndstooth Mafia” for use on T-shirts and hats. (The logo was seemingly inspired by the houndstooth fedora worn by the late Alabama football coach Paul “Bear” Bryant).  The opposition was dismissed as the TTAB determined that the University had no common law rights to a houndstooth pattern. (here)

Rather than appeal the TTAB decision to the Federal Circuit, the University opted to challenge the TTAB decision in a civil action under 15 U.S.C. 1071(b)(1) — in the Northern District of Alabama.  Before that action progressed very far the parties settled, and via consent decree of the Court, agreed that the TTAB decision should be vacated.  More importantly, the consent decree made statements of fact that the houndstooth pattern had become distinctive, which could impact other ongoing TTAB oppositions of the University on the same issue.  The University motioned to vacate the TTAB decision based upon the consent decree (here).  In an expanded panel decision that included the Chief Judge of the TTAB, the motion was unanimously denied. The TTAB determined that a settlement of private parties should not impact a decision of the TTAB absent extraordinary circumstances; especially where precedential.

The Alabama judge strongly disagreed.  In a stinging memorandum, he ordered the TTAB to vacate its Order within 14 days. (here)

The TTAB begrudgingly complied with the more recent Order of the Court, vacating the decision, but reserving the right to pursue the matter further (here).  Given the potential for the consent decree to interfere with other pending TTAB cases and procedure, it is likely the PTO will pursue the matter.

So what does this mean for the PTAB?

First unlike in Trademark oppositions, there is no right to challenge a decision of the PTAB by civil action.  Still, many AIA trial proceedings run concurrent with a district court infringement proceeding involving the same patent and parties.  Might a settlement of the infringement proceeding by consent decree present a similar opportunity to re-characterize the PTAB findings and order vacatur of a final written decision (FWD) or Institution Decision (ID)?  

As made clear in the last decision of the Alabama court, it was acting in its capacity as the PTAB reviewing court.  This was not the case of a district court simply ordering the vacatur of an unrelated proceeding. However, that is exactly how the TTAB perceived the situation.  That is, the TTAB argued that the Alabama Court had not, in fact, reviewed the full TTAB record. Thus, this decision if left undisturbed might provide precedent for collateral attacks on PTAB decisions by unrelated courts.  

In AIA trial proceedings this would be quite attractive as, if nothing else, vacatur by consent decree (would be an avenue to “settle” a PTAB proceeding without having to file the actual settlement papers (which risk public access if “good cause” is shown). See 37 C.F.R. §42.74

What about the Federal Circuit?

Such a CAFC Order would seem very unlikely. While the Federal Circuit can certainly vacate PTAB decisions on full review, I am not aware of any vacaturs ordered to erase an adverse decision of a losing party.  In fact, when asked most recently, the Court declined. See Tafas v. Kappos, Fed. Cir., No. 2008-1352, 11/13/09.

Should make for an interesting debate should the PTO seek review of the Court Order.

Cuozzo Debate Moves Forward

Over the past week or so, the Petitioner’s opening brief and supporting amicus filings have been submitted to the Supreme Court in Cuozzo Speed v. Lee. (Filings linked below). Cuozzo once again tries to draw a distinction between “adjudicative” PTAB trial proceedings and “examinational” proceedings relative to amendment options. The argument being that since the ability to amend is the basis for applying a broadest reasonable claim interpretation (BRI), and as the PTAB is more restrictive than examination based proceedings in this regard, BRI is improperly applied in PTAB trials.  

Interestingly, Cuozzo characterizes patent reexamination as an iterative amendment process akin to regular prosecution. Yet, much like the PTAB, reexamination presents one opportunity to substantively amend (before final rejection and eventual appeal)

PPC Broadband Decision Volunteers Philips Claim Read in IPR Decision

The Patent Trial & Appeal Board’s (PTAB) use of the Broadest Reasonable Interpretation (BRI) standard is now slated for review by the Supreme Court in Cuozzo Speed v. Lee.  Opponents of the BRI standard, such as Cuozzo, argue that a “Philips” style claim construction is most appropriate for the PTAB because issued claims should be construed consistent with district court.  More importantly, Philips is considered to be a more patent friendly (i.e., narrower) interpretation. Yet, as I have pointed out before, the BRI and Philips frameworks are largely the same.  While the question posed to the Supreme Court in Cuozzo alleges a difference in the application of “plain and ordinary meaning,” this difference is readily disproven.

To the extent a difference can be delineated between PTAB and district court claim interpretation practices it is the perspective of the decision makers.  When applying Philips, courts will attempt to identify a “most reasonable” scope rather than the “broadest reasonable” scope.  While both selections require a reasonable outcome, and the constructions may lead to the same result in many cases, the “most reasonable” interpretation could include a selection between competing, reasonable constructions.  This selection is all too often driven by invalidity concerns. (despite the caution against such in the Philips decision itself)

Given that the PTAB has consistently maintained earlier BRI interpretations for patents that expired during review (requiring a switch to Philips) it is difficult to even identify a case where the PTAB’s proper application of Philips would move the needle.  Yesterday, the CAFC set out to provide such an example in PPC Broadband Inc., v. Corning Optical Communications RF, L.L.C.

In PPC, the Court reviewed the PTAB’s determination to cancel claims of several patents (8,287,320; 8,323,060; and 8,313,353) directed to coaxial cable connectors (such as the type you might screw into the back of your cable tv box). The claims of these patents were directed to connectors that included a “continuity member.”  The continuity member operates to ensure the electrical connections were maintained even when the threaded connectors became loose.

The prior art cited against the PPC patents showed a continuity member formed of a spring mechanism.  Patentee argued that the spring did not provide “consistent” or “continuous contact” despite the fact that such temporal features were not recited in its apparatus claims.  In the Final Written Decision, the Board explained:

[T]he claimed “continuity member” does not cease to be a continuity member, as would be understood by one of ordinary skill in the art, simply because the contact made between the coupler/nut and post may not be consistent to maintain a continuous electrical connection between these components.”  .    .    .    .“continuity” does not require some undefined level of consistency, reliability, or robustness of an electrical connection between the coupler/nut and post over some undefined period of time.

On appeal to the Federal Circuit, the majority (including Judges Moore and O’Malley who dissented from the denial of Cuozzo’s en banc rehearing request) explained how BRI was applied at the PTAB “despite important differences” between AIA proceedings and patent examination practices (reiterating points of the earlier dissent). The majority also noted that the application of BRI was outcome determinative, explained as  “a scenario likely to arise with frequency.”  The decision then volunteered a Philips construction for comparison to the Board’s BRI findings. (here)

Under Phillips, we would hold that the correct construction of the term “continuity member” requires, as PPC Broadband argues, a continuous or consistent connection. The American Heritage College Dictionary (4th ed. 2002) defines “continuity” as “1. The state or quality of being continuous. 2. An uninterrupted succession or flow; a coherent whole.”  

Furthermore, the specification discloses in multiple places that the continuity member should maintain a consistent and continuous connection. The specification teaches that “even when the coaxial connector 100 is only partially installed . . . the continuity member 70 maintains an electrical ground path,” and that “this continuous grounding path provides operable functionality of the coaxial cable connector 100 allowing it to work as it was intended even when the connector 100 is not fully tightened.”  It teaches that one embodiment of the continuity member is designed to “flex and retain constant physical and electrical contact with the nut 30, thereby ensuring continuity of a grounding path extending through the nut 30.” It describes other embodiments as making “resilient and consistent physical and electrical contact” with the nut, as “enhanc[ing]” the continuity member’s “ability to make consistent operable contact with a surface of the nut,” and as creating “a continuous electrical shield” from the cable through the port. It teaches that “[t]hose skilled in the art should appreciated [sic] that other geometric configurations may be utilized for the post contact portion 1277, as long as the electrical continuity member 1270 is provided so as to make consistent physical and electrical contact with the post.” (emphasis added). Indeed, the specification teaches that the fundamental purpose of the invention is to “ensur[e] ground continuity” and thereby solve problems associated with intermittent ground connections in the prior art, such as “loss of ground and discontinuity of the electromagnetic shielding.” In light of the ordinary meaning of “continuity” and the specification, which is replete with discussion of the “continuous” or “consistent” contact established by the continuity member, the correct construction of “continuity member” under the framework laid out in Phillips requires “consistent or continuous contact with the coupler/nut and the post to establish an electrical connection.”

However, claim construction in IPRs is not governed by Phillips. Under Cuozzo, claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips. Here, the Board’s construction is not unreasonable.

While the ordinary meaning of “continuity” and “continuous” often refers to something that is uninterrupted in time, these terms can also refer to something that is uninterrupted in space.  .   . For example, a continuous line is continuous for the length of the line; there is no additional requirement of temporal continuity.   .    .    .Corning argues that “continuity member” only requires spatial continuity—a physical connection that extends without interruption through the post, the continuity member, and the nut. There is some language in the specification to support Corning’s interpretation of “continuity member.”   .    .    .     .This description of a “continuous ground path” extending from component to component is consistent with Corning’s argument that the term “continuity” refers to an unbroken physical route, not necessarily a connection that is uninterrupted over time. We thus conclude that the Board’s construction— “that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there,” without requiring consistent or continuous contact—is the broadest reasonable construction.

(internal citations omitted)

Interestingly, the decision goes on to vacate the PTAB decision on some dependent claims that are deemed to expressly recite a persistent (i.e., “maintain”) connection.  Unfortunately no discussion on claim differentiation is provided.  Perhaps this issue was not part of the PTAB record.

Absent an interest to preserve the validity of these claims in view of the particular cited art, I don’t see how the public could construe these claims to include an unrecited, temporal limitation.  In my view, this decision only amplifies the value of BRI in protecting the public.

Repeated Emphasis of Embodiment Advantages Found Limiting

Limiting the scope of a patent claim to an unclaimed feature of a specification embodiment— even where it is the only described embodiment— is rarely successful. This is because patent specifications almost never describe an embodiment with words that manifest a clear intention to limit the scope of their invention to particular features. Yet, earlier this week, in Secure Web Conference Corp. v. Microsoft Corp., the Federal Circuit affirmed a district court claim construction that limited claims to an unclaimed feature of a specification embodiment.  The CAFC agreed with the lower court that the described embodiment was limiting as capturing the essence of the invention.  

To avoid prior art under the Broadest Reasonable Interpretation (BRI) rubric, Patentees often advocate for a narrow claim read before the USPTO Patent Trial & Appeal Board (PTAB).  As such, this district court appeal decision may be of particular interest to Patentees.

In reviewing Secure Web patents 6,856,686 & 6,856,687, the lower court held that the claimed “security devices” of the ‘686 patent and “network communication devices” of the ‘687 were stand-alone devices. (i.e., external and separate from other claimed devices). The Markman Order provided a clear non-infringement position for Microsoft, hence the appeal.

Although the claims did not explicitly recite that these devices were stand-alone, the Federal Circuit agreed with the narrow read, explaining (here):

All descriptions of the security device in the intrinsic record are limited to a stand-alone device.  .     .    .    .the specification touts the separate and stand-alone nature of the security device as an advantage.

First, the Background of the Invention section characterizes the security device as an add-on component to existing microprocessor-based devices, explaining that “as many users already possess telephones, facsimile machines and computers, it is desirable to provide a security device capable of performing [security] functions in connection with these existing devices.”  The remainder of the specification reinforces that using a stand-alone security device is not mere happenstance.

For example, in an embodiment where the microprocessor-based device is a computer, the specification explains that separating the security device from the microprocessor-based device advantageously allows a user to secure data residing in the microprocessor-based device in the event it is lost or stolen. .    .    .    .“In this way, even if the computer 40 becomes lost or stolen, unauthorized access to the encrypted file could still be frustrated by adequately safeguarding device 10.” This benefit is derived directly from the separation of the security device and the computer.

Not only does the specification describe specific advantages gained from separating the security device from the microprocessor-based device, but also it never once suggests embedding the security device within the microprocessor-based device. Figure 2 provides a detailed view of the security device itself. Figure 2 shows, and the associated text describes, several sets of input/output ports on the security device so that various microprocessor-based devices may become “coupled” to it. Figure 2 and its associated text also indicate that the security device has its own microcontroller. The existence of ports for interfacing with other devices and the use of an independent microcontroller exhibit the level of self-sufficiency expected of a stand-alone device.

We are mindful not to limit claims to preferred embodiments, but in this case, the district court did not err in concluding that Figures 1 and 2 depict the essence of the claimed invention rather than a preferred embodiment. Particularly, the specification describes Figure 1 as depicting “a communication system according to the present invention” and Figure 2 as depicting “a telecommunications security device according to the instant invention.”  While the specification later describes Figure 2 as “a block diagram of a preferred form of the security device according to the instant invention” this statement does not change the understanding of “security device” at least because the specification repeatedly notes the importance of using an external security device, reinforcing that the security device of the invention is limited to stand-alone security devices. Not only does the specification describe specific advantages gained from separating the security device from the microprocessor-based device, but also it never once suggests embedding the security device within the microprocessor-based device.

(internal citations omitted, emphasis added)

Presumably, this analysis would be the same under a Philips or BRI claim analysis.

CAFC Faults Treatment of Motion to Amend

Last week, the Federal Circuit remanded an Inter Partes Review (IPR) appeal from the Patent Trial & Appeal Board (PTAB) so that Patentee’s motion to amend could be reconsidered. In the decision, the Court faulted the Board for applying a strict view of the Idle Free requirements (softened by the PTAB after this decision in Masterimage). Additionally, the Court found the Board’s analysis lacking as to the patentable distinctiveness of substitute claims. Nike, Inc. v. Adidas AG 14-1542 (here)

While the Appellant-Patentee also sought to unravel the requirement to demonstrate patentability in a PTAB motion to amend, the Court maintained its course as established in Microsoft Corp. v. Proxyconn, Inc.  While far from an eventful remand, the Court’s mandate publicly demonstrates the corrective evolution of PTAB amendment practice. Decisions such as this will no doubt serve as data points in the Cuozzo appeal to the Supreme Court.
Specifically, the Court explained:

The PTO further explained that, although the Board’s denial of Nike’s motion to amend was based on a reasonable reading of Idle Free, given the clarification in MasterImage 3D, the PTO acknowledged that the Board “read Idle Free too aggressively in this decision.”

We agree with the PTO. At the heart of Idle Free, as interpreted by MasterImage 3D, is the question of whether the patent owner has submitted the necessary information to comply with its duty of candor to the office. In this case, there is not, and there has never been, an allegation that Nike violated its duty of candor. Moreover, the PTO acknowledged that Nike’s statement about the substitute claims’ patentability over prior art not of record but known to Nike would satisfy the obligation as explained in MasterImage 3D.

(internal citations omitted)

Going forward, it seems the Board will have to accept a simple certification from Patentee’s attorney as to this aspect of the Idle Free requirements. 

As to the distinctiveness of multiple substitute claims, the Court explained:

The Board explained that, under Idle Free, whether both claim 48 and claim 49 could be substituted for original claim 19 depended on whether those claims were patentably distinct from each other. Despite recognizing this standard, the Board proceeded to compare the limitations in each of these claims to the prior art.  .    .    .    .    .The Board then concluded that Nike had not demonstrated “that claims 48 and 49 are patentably distinct from each other.”     .      .       .
      We agree with Nike that, despite correctly reciting the Idle Free standard that multiple substitute claims are permissible if they are patentably distinct from each other, the Board nevertheless did not engage in any such analysis .    .    .

(internal citations omitted)

That is, while the claims may very well be indistinct, that determination needs to flow from a comparison of the claims to each other.

On remand, the Board will focus on the substitute claims as they compare to the art of record, which Appellee argued demonstrates unpatentability in any event. The Court declined to reach these issues.

PTAB Need Not Address Denied Trial Grounds in Final Decision

The Supreme Court will soon consider the propriety of the “appeal bar” of 35 U.S.C. § 314(d) in Cuozzo. This appeal bar of the America Invents Act (AIA) prevents appeal of institution decisions of the Patent Trial & Appeal Board (PTAB). To date, attempts to circumvent this bar have failed via writ of mandamus to the Court of Appeal for the Federal Circuit (CAFC), and lawsuits against the USPTO under the Administrative Procedure Act (APA).

This week, another attempt to side-step the appeal bar was denied by the CAFC in Synopsys Inc., v. Mentor Graphics Corp.  

In Synopsys, the petitioner challenged claims 1-15 and 20-33 of Mentor Graphics patent 6,240,376 in Inter Partes Review (IPR).  Trial was instituted for claims 1–9, 11, and 28–29.  Claims 10, 12– 15, 20–27, and 30–33 were denied institution.  After the PTAB trial concluded, Synopsys brought a suit in district court under the APA seeking to invalidate the PTAB’s regulation that allows institution of an inter partes review on “all or some of the challenged claims” 37 C.F.R. § 42.108. The suit also challenged the PTO’s practice of issuing final decisions on fewer than all of the claims raised in a petition. The district court denied the suit on jurisdictional grounds.  Synopsys raised the same procedural issues on appeal from the PTAB, among others.

In deciding the issue of whether or not the PTAB must institute trial as to all challenged claims if one is found to be proper, the Court explained (here):

[T]he text makes clear that the claims that the Board must address in the final decision are different than the claims raised in the petition. Congress explicitly chose to use a different phrase when describing claims raised in the petition for inter partes review in § 314(a) and claims on which inter partes review has been instituted in § 318(a). Section 314(a) specifies that Board may not institute inter partes review unless “the information presented in the petition . . . and any response filed . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added). However, in describing the final written decision, Congress stated that the Board must issue a final written decision with respect to any “claim challenged by the petitioner.” 35 U.S.C. § 318(a) (emphasis added). When Congress chooses to use two different words or phrases, this typically suggests that the two were deemed to have two different meanings.         
                     .            .            .            .            .
In addition, the conditional phrase “[i]f an inter partes review is instituted” in § 318(a) also strongly suggests that the “challenged” claims referenced are the claims for which inter partes review was instituted, not every claim challenged in the petition. Thus, the text of § 318(a) demonstrates that the Board need only issue a final written decision with respect to claims on which inter partes review has been initiated and which are challenged by the petitioner after the institution stage.
                    .            .            .            .            .
Although we find that the language is clear, if there were any doubt about the Board’s authority and the statute were deemed ambiguous, the PTO has promulgated a regulation allowing the Board to institute as to some or all of the claims. The regulation “authorize[s] the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability
asserted for each claim.” 37 C.F.R. § 42.108. Contrary to Synopsys’s argument that this regulation is invalid, the PTO has explicit authority to promulgate regulations “setting forth the standards for the showing of sufficient grounds to institute” inter partes review. 35 U.S.C. § 316(a)(2). This regulation is plainly an exercise of that authority. Under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), this regulation is a reasonable interpretation of the statutory provision governing the institution of inter partes review. See Cuozzo, 793 F.3d at 1278. As the PTO noted in adopting the regulation, the claim-by-claim approach streamline[s] and converge[s] the issues for consideration” and “aids in the efficient operation of the Office and the ability
of the Office to complete the [review] within the one-year timeframe.”

Of note to practitioners is footnote 4, which explains: 

We note that an issue relating to institution does not become appealable simply because the Board mentions that issue in its final decision. See Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015) (appealability bar applies to institution decisions “even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision”).

Judge Newman penned a lengthy dissent that explained her belief that the PTO regulation was inconsistent with the statute and its legslative history, and, therefore, the regulation could not be given Chevron deference.  She also re-visited some of her earlier dissents in Cuozzo and Ethicon, and found the footnote on Achates publishing to be an unnecessary extension of that holding.