`571-272-7822
`
`Paper 15
`Date: May 21, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GAIN CAPITAL HOLDINGS, INC.,
`Petitioner,
`v.
`OANDA CORPORATION,
`Patent Owner.
`
`CBM2020-00023
`Patent 7,496,534 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`In a May 18, 2021 email to the Board, Patent Owner indicated that it
`intends to file a motion to amend in the above-referenced proceeding, and
`requested a conference call to satisfy the requirement set forth in 37 C.F.R.
`§ 42.221(a). Based on the facts of this proceeding, we determine that a
`conference call is not necessary, and the conference requirement is deemed
`satisfied. In this Order, we set forth general guidance for motions to amend
`and specific guidance for the Board’s Motion to Amend Pilot Program.
`
`
`
`
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`CBM2020-00023
`Patent 7,496,534 B2
`General Guidance for Motions to Amend
`The requirements for a motion to amend are set forth in 37 C.F.R.
`§ 42.221. Although Patent Owner does not bear the burden of persuasion to
`demonstrate patentability of the proposed substitute claims,1 a motion to
`amend must still comply with several statutory and regulatory requirements,
`as discussed in Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
`(PTAB Feb. 25, 2019) (precedential), Amazon.com, Inc. v. Uniloc
`Luxembourg S.A., IPR2017-00948, Paper 34 (PTAB Jan. 18, 2019)
`(precedential), and the Office’s November 2019 Consolidated Trial Practice
`Guide.2
`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. 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. This
`includes any dependent claim that Patent Owner intends to depend from a
`proposed substitute independent claim. For each proposed substitute claim,
`the motion to amend 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.
`Additionally, Patent Owner must show sufficient written description
`support in the original specification for each proposed substitute claim.
`
`
`1 See Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Bosch
`Automotive Services Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir.
`2017).
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
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`CBM2020-00023
`Patent 7,496,534 B2
`37 C.F.R. §47.221(b)(1). Citation should be made to the original disclosure
`of the application as filed, rather than to the patent as issued. Patent Owner
`must also 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 claim is in the identification of the claim from
`which it depends. The written description support must be set forth in the
`motion to amend itself, not in the claim listing.
`As set forth in 37 C.F.R. § 42.24, Patent Owner’s motion to amend
`and Petitioner’s opposition are each limited to 25 pages. 37 C.F.R.
`§§ 42.24(a)(1)(vi), 42.24(b)(3). Patent Owner’s reply and Petitioner’s
`sur-reply are limited to 12 pages. 37 C.F.R. § 42.24(c)(3).
`
`
`Specific Guidance for the Motion to Amend Pilot Program
`The Board’s pilot program for motion to amend practice and
`procedure in AIA trial proceedings became effective on March 15, 2019.
`Practices and procedures for the pilot program are set forth in the Notice
`Regarding a New Pilot Program Concerning Motion to Amend Practice and
`Procedures in Trial Proceedings Under the America Invents Act Before the
`Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019)
`(“Notice”). The pilot program applies to all AIA trial proceedings instituted
`on or after the March 15, 2019 effective date. Because this proceeding was
`instituted on March 18, 2021, the pilot program is applicable to a motion to
`amend filed in this proceeding. Even so, Patent Owner has the opportunity
`to proceed with a motion to amend “in effectively the same way as current
`practice by not electing to either receive preliminary guidance [from the
`
`3
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`CBM2020-00023
`Patent 7,496,534 B2
`Board on a first motion to amend] or to file a revised [motion to amend].”
`Id. at 9497, 9499.
`Under the pilot program, receiving preliminary guidance on a motion
`to amend is not automatic. Importantly, if Patent Owner seeks preliminary
`guidance from the Board on a motion to amend, an explicit request for
`preliminary guidance must be included in the first motion to amend filed
`no later than DUE DATE 1. If Patent Owner requests preliminary guidance
`in its first motion to amend, the Board will respond to Patent Owner’s
`request by issuing preliminary, non-binding guidance to the parties on Patent
`Owner’s first motion to amend. Such guidance will be provided
`approximately four weeks after Petitioner files an opposition to the motion
`to amend (or after the due date for the opposition (DUE DATE 2), if none is
`filed). Information regarding such guidance is set forth in the Notice.
`Patent Owner has several options for addressing the Board’s
`preliminary guidance and/or Petitioner’s opposition, including filing a
`revised motion to amend on DUE DATE 3. Id. at 9499–9502. A revised
`motion to amend would be in lieu of a reply to Petitioner’s opposition to the
`motion to amend, and in place of the first motion to amend. See
`L&P Property Mgmt. Co. v. Remacro Mach. & Tech. (Wujiang) Co.,
`IPR2019-00255, Paper 15 at 12–14 (PTAB June 18, 2019) (Section IV.3,
`providing information about Patent Owner’s options under the pilot
`program). Further instructions and guidance for a revised motion to amend
`under the pilot program are set forth in the Notice. A request for preliminary
`guidance is not a prerequisite for filing a revised motion to amend, and
`Patent Owner may file a revised motion regardless of whether it requests
`preliminary guidance. Notice, 9501. Should Patent Owner file a revised
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`4
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`CBM2020-00023
`Patent 7,496,534 B2
`motion to amend, the Board will issue a revised scheduling order to allow
`additional briefing relating to the revised motion to amend. Id.
`The parties may not stipulate to a different due date for DUE DATE 2
`related to Petitioner’s opposition to the motion to amend, or for DUE DATE
`3 related to Patent Owner’s reply to the opposition to the motion to amend
`(or Patent Owner’s revised motion to amend), without prior authorization
`from the Board. See Paper 11, 7.3
`The parties should contact the Board in the event that they have any
`questions about the motion to amend process or require further guidance.
`In consideration of the foregoing, it is hereby:
`ORDERED that the conference requirement under 37 C.F.R.
`§ 42.221(a) has been satisfied.
`
`
`
`3 We note that the Scheduling Order erroneously stated that the challenged
`patent will expire on May 14, 2021. Paper 11, 10 n.4. Patent Owner stated
`in its email to the Board that the patent will expire on May 23, 2025.
`
`5
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`
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`CBM2020-00023
`Patent 7,496,534 B2
`For PETITIONER:
`
`Michael Rosato
`Matthew Argenti
`Wesley Derryberry
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`wderryberry@wsgr.com
`
`
`For PATENT OWNER:
`
`Drew Koning
`KONING ZOLLAR LLP
`drew@kzllp.com
`
`
`
`6
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