Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 13
`
` Filed: August 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`VEDANTI SYSTEMS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-002121
`Patent 7,974,339 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A conference call in the above proceeding was held on August 10,
`2016, among respective counsel for Petitioner and Patent Owner, and Judges
`Zecher, Arbes, and Hudalla. The call was requested by Patent Owner to
`discuss certain amendments it may submit in a motion to amend.
`
`1 Case IPR2016-00215 has been consolidated with this proceeding.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 13
`
` Filed: August 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`VEDANTI SYSTEMS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-002121
`Patent 7,974,339 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A conference call in the above proceeding was held on August 10,
`2016, among respective counsel for Petitioner and Patent Owner, and Judges
`Zecher, Arbes, and Hudalla. The call was requested by Patent Owner to
`discuss certain amendments it may submit in a motion to amend.
`
`1 Case IPR2016-00215 has been consolidated with this proceeding.
`
`
`
`
`
`IPR2016-00212
`Patent 7,974,339 B2
`
`
`
`Patent Owner indicated that it intended to propose one substitute
`claim for each of independent claims 7 and 10 of the challenged patent, and
`one substitute claim for each challenged claim depending from claims 7 and
`10 to update the dependencies in the dependent claims. Patent Owner is
`reminded that each proposed, substitute claim must be given a new claim
`number beginning sequentially from the last numbered claim of the
`challenged patent. Further, any claim not subject to review will continue to
`exist in its original form following review of the challenged claims (i.e.,
`dependent from and incorporating the limitations of an original parent claim
`and any intervening claims, even if the parent claim is determined to be
`unpatentable and a substitute claim added).
`Generally, consideration of a motion to amend is contingent on our
`determining that the claim for which the substitute claim is proposed is
`unpatentable. Entry of proposed amendments is not automatic; Patent
`Owner must demonstrate the patentability of the proposed substitute claims.
`See 37 C.F.R. § 42.20(c). This includes demonstrating that the proposed
`substitute claims are supported by the written description of the application
`upon which the substitute claims rely, addressing the patentability of the
`proposed substitute claims over the prior art of record and other prior art
`known to Patent Owner, and accounting for the basic knowledge and skill
`set possessed by a person of ordinary skill in the art even without reliance on
`any particular item of prior art. See 37 C.F.R. § 42.121(b). For further
`guidance on a motion to amend, we direct the parties to the following
`decisions: (1) Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-
`00027 (PTAB June 11, 2013) (Paper 26) (informative) (“Idle Free”); (2)
`Corning Optical Commc’n RF, LLC, v. PPC Broadband, Inc., Case
`
`
`
`2
`
`
`
`IPR2016-00212
`Patent 7,974,339 B2
`
`
`IPR2014-00441 (PTAB Oct. 20, 2014) (Paper 19); and (3) MasterImage 3D,
`Inc. v. RealD Inc., Case IPR2015-00040, slip op. 3 (PTAB July 15, 2015)
`(Paper 42) (precedential) (“MasterImage”).
`Patent Owner also sought guidance about the universe of prior art
`over which it must make a showing of patentable distinction for the
`proposed claims. MasterImage includes the following explanation of what
`is meant by “prior art of record” in Idle Free:
`a.
`any material art in the prosecution history of the patent;
`b.
`any material art of record in the current proceeding,
`including art asserted in grounds on which the Board did not
`institute review; and
`c.
`any material art of record in any other proceeding before
`the Office involving the patent.
`MasterImage, slip op. at 2. MasterImage also explains that “prior art known
`to the patent owner” should be understood as “no more than the material
`prior art that Patent Owner makes of record in the current proceeding
`pursuant to its duty of candor and good faith to the Office under 37 C.F.R.
`§ 42.11, in light of a Motion to Amend.” Id. at 3.
`Patent Owner asked us how to make additional prior art of record in
`this case. Specifically, Patent Owner indicated its desire to make of record
`prior art references that were considered in a nullification proceeding for a
`foreign patent. We instructed Patent Owner that it may file additional prior
`art references separately as exhibits with its motion to amend. Each
`reference added to the record as an exhibit must be uniquely and
`sequentially numbered in the appropriate range (2001–2999 for Patent
`Owner). See 37 C.F.R. § 42.63(c).
`
`
`
`
`3
`
`
`
`IPR2016-00212
`Patent 7,974,339 B2
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner has satisfied the conference
`requirement of 37 C.F.R. § 42.121(a) for the instant proceeding.
`
`
`
`
`
`4
`
`
`
`IPR2016-00212
`Patent 7,974,339 B2
`
`
`PETITIONER:
`Michael V. Messinger
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mikem-PTAB@skgf.com
`
`Michelle K. Holoubek
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mholoubek-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Robert M. Asher
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`rasher@sunsteinlaw.com
`
`John J. Stickevers
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`jstickevers@sunsteinlaw.com
`
`
`
`5
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