Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 18
`Entered: April 8, 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)
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 18
`Entered: April 8, 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 April 4, 2019,
`among respective counsel for Petitioner and Patent Owner, and Judges
`Zecher, Arbes, and Tornquist.1 The call was requested by Petitioner to seek
`authorization to file a motion to strike a portion of Patent Owner’s Motion to
`Amend (Paper 17) for violating the 25-page limit set forth in 37 C.F.R.
`§ 42.24(a)(1)(vi). During the call, Petitioner pointed out that the Motion to
`Amend includes 25 pages of text, with one paragraph referencing an
`attached “Appendix A.” Appendix A is a claim listing of Patent Owner’s
`proposed substitute claims (18 pages) and a chart showing alleged written
`description support for the limitations of the proposed substitute claims
`(85 pages). Petitioner argued that the latter portion of Appendix A causes
`the Motion to Amend to exceed the 25-page limit. Patent Owner responded
`that it believed the written description support chart was proper according to
`the language of 37 C.F.R. § 42.221(b), but if not, Patent Owner requested
`authorization to file a corrected motion to amend removing the written
`description support chart and replacing it with five pages of citations in the
`motion itself. Patent Owner argued that Petitioner would not be prejudiced
`by doing so because the original written description support chart does not
`include any arguments, only quotations from U.S. Patent Application
`No. 10/117,309 (“the ’309 application”), which is the application that issued
`as U.S. Patent No. 7,134,087 B2.
`As explained during the call, we agree with Petitioner that Patent
`Owner’s Motion to Amend exceeds the 25-page limit. A motion to amend
`
`
`1 A court reporter, retained by Petitioner, was present on the call. Petitioner
`shall file the transcript of the call as an exhibit when it is available. See
`37 C.F.R. § 43.63(a).
`
`
`
`2
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`must include a “claim listing,” which may be filed as an appendix to the
`motion and does not count toward the page limit for the motion. See
`37 C.F.R. §§ 42.24(a)(1), 42.221(b); Paper 15, 2. Thus, the first portion of
`Patent Owner’s Appendix A is proper and does not count toward the
`25-page limit. A “claim listing,” however, is merely a listing of claims,
`in either original or modified form; it does not include argument or material
`from any other sources, such as patent applications or prior art. See
`37 C.F.R. § 42.221(b); MLB Advanced Media, L.P. v. Front Row Techs.,
`LLC, Case IPR2017-01127, slip op. at 3 (PTAB Jan. 16, 2018) (Paper 24).
`“The written description support must be set forth in the motion to amend
`itself, not the claim listing . . . .” Lectrosonics, Inc. v. Zaxcom, Inc.,
`Case IPR2018-01129, slip op. at 8 (PTAB Feb. 25, 2019) (Paper 15)
`(precedential); Paper 15, 3. Therefore, the second portion of Appendix A
`is part of the Motion to Amend itself, and the length of the Motion to Amend
`is 110 pages.
`As we noted on the call, we are not persuaded that a motion to strike
`is warranted under the particular factual circumstances of this case. We are
`persuaded that allowing Patent Owner to re-file its Motion to Amend in the
`manner it proposes is appropriate, rather than merely striking the portion
`containing the written description support chart as Petitioner requests, which
`would prevent Patent Owner from attempting to demonstrate written
`description support for its proposed substitute claims under 37 C.F.R.
`§ 42.221(b). We also are persuaded that a five-page extension of the page
`limit is appropriate to do so. Petitioner will be given an equal number of
`pages to respond. See 37 C.F.R. § 42.5(a).
`
`
`
`3
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`
`Finally, Patent Owner noted that it included in its written description
`support chart full quotes from the ’309 application as filed (Ex. 1002,
`10–36), in part, because the application did not include line numbers.
`To facilitate our review and assist the parties in making arguments in their
`papers, Patent Owner is authorized to file a marked-up version of the
`’309 application adding line numbers only.
`In consideration of the foregoing, it is hereby:
`ORDERED that no motion to strike the written description support
`chart in Appendix A of Patent Owner’s Motion to Amend (Paper 17) is
`authorized;
`FURTHER ORDERED that Patent Owner instead is authorized to
`file, by April 10, 2019, (1) a marked-up version of the ’309 application
`(Ex. 1002, 10–36) labeled with line numbers and making no other alterations
`to the document, and (2) a corrected motion to amend removing the written
`description support chart in Appendix A and in its place adding a list of
`citations in the motion itself of up to five additional pages;
`FURTHER ORDERED that the corrected motion shall not make any
`other additions or changes to the originally filed Motion to Amend;
`FURTHER ORDERED that, once Patent Owner files its corrected
`motion to amend, the original Motion to Amend shall be expunged from the
`record of this proceeding pursuant to our authority under 37 C.F.R.
`§ 42.7(a); and
`FURTHER ORDERED that the page limit for Petitioner’s opposition
`to the Motion to Amend is 30 pages.
`
`
`
`
`4
`
`
`
`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
`
`
`
`
`5
`
`
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