Because TQ Delta had notice of the claim construction issue and the opportunity to be heard, the PTAB did not violate the APA. See Hamilton Beach Brands, Inc. v. f’real Foods, LLC , 908 F.3d 1328, 1339 (Fed. Cir. 2018) (distinguishing SAS because the party asserting the APA violation "had notice of the contested claim construction is-sues and an opportunity to be heard"). II. Claim Construction
"As formal administrative adjudications, IPRs are subject to the APA." Hamilton Beach Brands, Inc. v. f'real Foods, LLC , 908 F.3d 1328, 1338 (Fed. Cir. 2018) (citing Dell Inc. v. Acceleron, LLC , 818 F.3d 1293, 1298, 1301 (Fed. Cir. 2016) ). The APA requires that we, as the reviewing court, "hold unlawful and set aside agency action ... not in accordance with law [or] ... without observance of procedure required by law."
SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348 (2018), held that the PTAB may not change a claim construction between institution and Final Written Decision without giving the parties reasonable notice and an opportunity to argue under the new construction. Second, Hamilton Beach Brands, Inc. v. f'real Foods LLC, 908 F.3d 1328, 1338-39 (Fed. Cir. 2018), rejected a challenge to a Final Written Decision's adoption of constructions first proposed in a patent owner response because the petitioner had an opportunity to respond.
"Pursuant to these provisions, the Board may not change theories midstream without giving the parties reasonable notice of its change." Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1339 (Fed. Cir. 2020) (quoting Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1338 (Fed. Cir. 2018)). We review de novo the Board's compliance with the formal adjudication requirements of the APA.
Similarly, in Hamilton Beach Brands, Inc. v. f'real Foods LLC, relying on our earlier decision in SAS, we concluded, again, that a petitioner is entitled to respond to a new claim construction. 908 F.3d 1328 (Fed. Cir. 2018). There, as here, prior to institution, neither party had proposed an express construction of the relevant terms, and the Board instituted under the parties' implicit understanding of the terms.
We hold, therefore, that because Google "had notice of the contested claim construction issues and an opportunity to be heard," the Board's claim construction of Claim 1 did not violate the APA. Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1339 (Fed Cir. 2018).
A slight difference in wording does not amount to a difference in construction. See, e.g., Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1338-39 (Fed. Cir. 2018) ("[T]he Board's final adopted construction of the nozzle terms, while not identical to those proposed by f'real, are similar enough to f'real's proposed constructions so as to not constitute changing theories midstream in violation of the APA.").
We are not persuaded by these arguments. While the Board's construction does not mirror the exact wording of Simpson's proposed construction for this limitation, it is "similar enough to [Simpson's] constructions so as to not constitute changing theories midstream in violation of the APA." Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1338-39 (Fed Cir. 2018). This is not a situation where the Board sua sponte raised claim construction post-institution.
Although the Board did not consider in detail the alleged unexpected properties of the claimed crystalline monohydrate of claim 4, the Board stated that such unexpected results served as further evidence undermining Mylan's challenge to claim 4. SeeHamilton Beach Brands, Inc. v. f'real Foods, LLC , 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding that there is no need to reach objective indicia of nonobviousness where the petitioner has not made a showing necessary to prevail on threshold obviousness issues).
The contrast in the object of the variants of the same verb is suggestive of a difference. See J.A. 2806-07 (Board resting primarily on this rationale); J.A. 3720 (Hearing Tr. at 57:1-24) (similar for district court); see, e.g., Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1340 (Fed. Cir. 2018). But this difference in one phrase is only a starting point.