Trials@uspto.gov Paper No. 10 Paper No. 29
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`571-272-7822
`Date Entered: January 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAP AMERICA, INC.
`Petitioner
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`v.
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`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case CBM2013-00013
`Patent 8,037,158
`____________
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`
`
`Before KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA
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`McNAMARA, Administrative Patent Judge.
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`
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`SUMMARY OF CONFERNCE CONERNING PROPOSED MOTION TO
`AMEND
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`Case CBM2013-00013
`Patent 8,037,158
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`On January 7, 2014, the Board conducted a conference with the parties to
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`discuss the requirements for a possible motion to amend by Patent Owner. Patent
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`Owner stated that it was considering amending one claim, by adding claim
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`elements, in each the following proceedings: IPR2013-00194, IPR2013-00195 and
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`CBM2013-00013. In preparing its motion to amend, the Board recommends that
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`Patent Owner review the guidance provided by the Board in the proceedings cited
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`in this paper.
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`A motion to amend claims in an inter partes review is not itself an
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`amendment. Unlike a claim amendment in patent prosecution, amendments
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`proposed by a motion to amend are not entered as a matter of right. The applicable
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`presumption is that only one substitute claim would be needed to replace each
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`challenged claim, although the presumption may be rebutted by a demonstration of
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`need. 37 C.F.R. § 42.121(a)(3). Absent special circumstances, a challenged claim
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`can be replaced by only one claim, and a motion to amend should, for each
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`proposed substitute claim, specifically identify the challenged claim that it is
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`intended to replace. A proposed claim should be traceable to an original
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`challenged claim as a proposed substitute claim for the challenged claim. A desire
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`to obtain a new set of claims having a hierarchy of different scope typically would
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`not constitute sufficient special circumstances because an inter partes review is an
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`adjudicatory proceeding, rather than an examination. See, Abbott Labs v. Cordis
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`Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). If the patent owner desires to
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`remodel its claim structure according to a different strategy, it may consider
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`pursuing another type of proceeding before the Office.
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`A motion to amend may be denied where (i) the amendment does not
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`respond to a ground of unpatentability involved in the trial or (ii) the amendment
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`seeks to enlarge the scope of the claims of the patent or introduce new subject
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`2
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`Case CBM2013-00013
`Patent 8,037,158
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`matter. 37 C.F.R. § 42.121(a)(2). These conditions are evaluated for each
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`substitute claim traceable to a challenged claim that the substitute claim is intended
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`to replace. A proper substitute claim under 37 C.F.R, § 42.121(a)(2) must only
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`narrow the scope of the challenged claim it replaces and may not enlarge the scope
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`of the challenged claim by eliminating any feature or limitation. A proposed
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`substitute claim is not responsive to an alleged ground of patentability if it does not
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`either include or narrow each feature of the challenged claim being replaced. See,
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`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26.
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`Unlike patent application proceedings, in an inter partes review a proposed
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`amendment to the claims is not authorized unless the movant has shown that the
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`proposed substitute claims are patentable. In all circumstances the patent owner
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`must make a showing of patentable distinction over the prior art. A patent owner
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`should identify specifically the feature or features added to each substitute claim,
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`as compared to the challenged claim it replaces, and come forward with technical
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`facts and reasoning about those features including construction of new claim terms,
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`sufficient to persuade the Board that the proposed substitute claim is patentable
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`over the prior order of record, and over prior art not of record but known to the
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`patent owner. The burden is not on the petitioner to show unpatentability, but on
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`the patent owner, as the moving party, to show patentable distinction over the prior
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`art of record and other prior art known to the patent owner. 37 C.F.R. § 42.20(c).
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`A showing of patentable distinction may rely on the declaration testimony of a
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`technical expert about the level of ordinary skill in the art and about the
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`significance and usefulness of features added by the proposed claim.
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`A mere conclusory statement by counsel in the motion to amend that one or
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`more added features are not described in any prior art or would not have been
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`suggested or rendered obvious by the prior art is facially inadequate. Id. It also is
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`insufficient for the movant simply to explain why the proposed substitute claims
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`are patentable in consideration of the challenges on which the Board instituted
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`review. Limiting the discussion either to the references already in the proceeding,
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`or to the narrow combination specifically recited in the claim, does not provide a
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`meaningful analysis. See, Corning Gilbert, Inc. V. PPC Broadband, Inc.,
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`IPR2013-00347, Paper No. 20. In explaining why it believes the claimed subject
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`matter is patentable, the movant must address issues of nonobviousness,
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`meaningfully. The movant should discuss the level of ordinary skill in the art,
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`explaining the basic knowledge and skill set already possessed by one of ordinary
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`skill in the art, especially with respect to the particular feature or features the patent
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`owner has added to the original patent claims. The movant should identify in what
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`context the added feature, or something close to it, was already known, albeit not
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`in the specific combination recited in the claims at issue. Id.
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`A motion to amend claims must clearly identify the written description
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`support for the proposed substitute claims. The written description test is whether
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`the original disclosure of the application relied upon reasonably conveys to a
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`person of ordinary skill in the art that the inventor had possession of the claimed
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`subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
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`F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). 37 C.F.R. § 42.121(b)(1) requires the
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`patent owner to set forth the support in the original disclosure of the patent for
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`each proposed substitute claim i.e., the patent owner must clearly identify the
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`written description support in the disclosure corresponding to the earliest date upon
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`which the patent owner seeks to rely.
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`Merely indicating where each claim limitation individually is described in
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`the original disclosure may be insufficient to demonstrate support for the claimed
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`subject matter as a whole. While the proposed substitute claims need not be
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`described verbatim in the original disclosure in order to satisfy the written
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`description requirement, should the claim language not appear in the same words
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`in the original disclosure, a mere citation to the original disclosure without any
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`explanation as to why a person of ordinary skill in the art would have recognized
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`that the inventor possessed the claimed subject matter as a whole may be
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`inadequate. See, Nichia Corporation v. Emcore Corporation, IPR2012-00005,
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`Paper No. 27.
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`As agreed in a stipulation filed on December 24, 2013, a patent owner
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`response and motion to amend in this proceeding are due on January 10, 2014.
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`Paper No. 26. During the call, the parties made arrangements to discuss a further
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`adjustment of the due date for the patent owner response and motion to amend.
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`The parties should file a stipulation with the Board, should they agree to modify
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`the due date.
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`PETITIONER: (via electronic transmission)
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`Lori A. Gordon
`Lgordon-PTAB@skgf.vom
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`Michael Q. Lee
`Mlee-PTAB@skgf.com
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`PATENT OWNER: (via electronic transmission)
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`Bryan Boyle
`bboyle@carrferrell.com
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`Lawrence B. Goodwin
`LawrenceGoodwinPC@gmail.com
`
`Gerald Dodson
`jdodson@carrferrell.com
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`5
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