`571-272-7822
`
`
`
`Paper 15
`Entered: March 7, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONNEXIONS LOYALTY, INC.,
`Petitioner,
`
`v.
`
`MARITZ HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case CBM2018-00037
`Patent 7,134,087 B2
`____________
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`
`A conference call in the above proceeding was held on March 6, 2019,
`among respective counsel for Petitioner and Patent Owner, and Judges
`Zecher, Arbes, and Tornquist. The call was requested by Patent Owner to
`satisfy the requirement of 37 C.F.R. § 42.221(a) to confer with the Board
`before filing a motion to amend.
`We referred the parties to Aqua Products, Inc. v. Matal, 872 F.3d
`1290 (Fed. Cir. 2017); Western Digital Corporation v. SPEX Technologies,
`Inc., Case IPR2018-00082 (PTAB Apr. 25, 2018) (Paper 13) (informative);
`and the Memorandum re: Guidance on Motions to Amend in view of Aqua
`Products (Nov. 21, 2017) (available at https://www.uspto.gov/sites/default/
`files/documents/guidance_on_motions_to_amend_11_2017.pdf). We also
`provide the following guidance.
`Pursuant to 37 C.F.R. § 42.221(a)(2)(i), “[a] motion to amend may be
`denied where . . . [t]he amendment does not respond to a ground of
`unpatentability involved in the trial.” This trial involves an assertion that the
`claims of the challenged patent do not recite patent-eligible subject matter
`under 35 U.S.C. § 101. Paper 12, 7, 36. In that regard, we refer the parties
`to the recently published 2019 Revised Patent Subject Matter Eligibility
`Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), regarding the application of
`35 U.S.C. § 101.
`A claim listing, reproducing each proposed substitute claim, is
`required. 37 C.F.R. § 42.221(b). The claim listing may be filed as an
`appendix to the motion to amend, and shall not count toward the page limit
`for the motion. See 37 C.F.R. §§ 42.24(a)(1), 42.221(b). Any claim with a
`changed scope, subsequent to the amendment, should be included in the
`claim listing as a proposed substitute claim and have a new claim number.
`
`
`
`2
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`This includes any dependent claim that Patent Owner intends as dependent
`from a proposed substitute independent claim. For each proposed substitute
`claim, the motion should identify specifically the original claim that it is
`intended to replace and show clearly the changes of the proposed substitute
`claim with respect to the original claim.
`Patent Owner may only propose a reasonable number of substitute
`claims. 35 U.S.C. § 326(d)(1)(B). To the extent Patent Owner seeks to
`propose more than one substitute claim for an original claim, Patent Owner
`shall explain in the motion to amend the need for the additional claims and
`why the number of proposed substitute claims is reasonable. See 35 U.S.C.
`§ 326(d)(1)(B); 37 C.F.R. § 42.221(a)(3).
`Finally, Patent Owner must show sufficient written description
`support in the original specification for each proposed substitute claim.
`37 C.F.R. § 42.221(b)(1). Citation should be made to the original disclosure
`of the application, as filed, rather than to the patent as issued. Also, Patent
`Owner must show sufficient written description support for the entire
`proposed substitute claim and not just the features added by the amendment.
`This applies equally to independent claims and dependent claims, even if the
`only amendment to the dependent claims is in the identification of the claim
`from which it depends. Also, the motion to amend itself, not the claim
`listing, must set forth the written description support.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner has satisfied the conference
`requirement of 37 C.F.R. § 42.221(a).
`
`
`
`
`3
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`PETITIONER:
`
`Richard Wydeven
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`rwydeven@rfem.com
`
`
`PATENT OWNER:
`
`Robert M. Evans, Jr.
`Michael J. Hartley
`Micah T. Uptegrove
`STINSON LEONARD STREET LLP
`revans@senniger.com
`mhartley@senniger.com
`muptegrove@senniger.com
`
`
`
`
`4
`
`
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