(a) An inter partes review is a trial subject to the procedures set forth in subpart A of this part.
(b) In an inter partes review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action 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.
(c) An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.
[77 FR 48727, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 83 FR 51358, Oct. 11, 2018]
Notes of Decisions
In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015).
· cites it 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.”
Pers. Web Tech., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017).
· cites it 2× “” 37 C.F.R. § 42.100 (b) (2015). A recent revision, not applicable to the present case, now states that the broadest-reasonable-interpretation standard applies to “[a] claim in an unexpired patent that will not expire before a final written decision is issued,” but allows an IPR…”
Bradium Techs. LLC v. Andrei IANCU, 923 F.3d 1032 (Fed. Cir. 2019).
· cites it 3× “11, 2018) (codified at 37 C.F.R. § 42.100 (b) ). For petitions filed on or after November 13, 2018, the Board construes a 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…”
Intel Corp. v. Qualcomm Inc., 21 F.4th 784 (Fed. Cir. 2021).
· cites it 2× “Even when seeking the “broad- est reasonable construction in light of the specification,” 37 C.F.R. § 42.100 (b) (2017), we still give words “their plain meaning” unless “inconsistent with the specification and prosecution history.”
Personalized Media v. Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020).
“11, 2018) (codified at 37 C.F.R. § 42.100 (b)). Because Apple filed its IPR petition before November 13, 2018, we apply the broadest reasonable in- terpretation standard.”
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013 (Fed. Cir. 2017).
· cites it 2× “The ’349 Patent specifi- cation explains that “torque,” “speed,” and “airflow” are provided only as examples of the types of control signals that might be used; it is not an exhaustive list. See ’349 Patent, col.”
In Re Cuozzo Speed Tech., LLC, 778 F.3d 1271 (Fed. Cir. 2015).
· cites it 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.”
Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019).
“See 37 C.F.R. § 42.100 (b) ; Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board , 83 Fed.”
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015).
“Patent and Trademark Office (“PTO”) exceeded its authority in promulgating 37 C.F.R. § 42.100 (b), and that the broadest reasonable interpretation is inappropriate during IPRs in light of the patentee’s limited ability to amend its claims.”
— 37 C.F.R. § 42.100(b) — 2 cases
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