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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 50
`Entered: October 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-006221
`Patent 7,149,511 B1
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`On October 10, 2017, Patent Owner sent an email to
`Trials@uspto.gov requesting a conference call to “to seek permission, for
`good cause, to file a motion to amend the patent at issue.” A conference call
`to discuss this request was held on October 13, 2017, among respective
`
`
`1 Case IPR2016-00616 has been consolidated with this proceeding.
`
`
`
`
`
`Case IPR2016-00622
`Patent 7,149,511 B1
`
`counsel for Petitioner and Patent Owner, and Judges Arbes, Scanlon, and
`Hudalla. For the reasons that follow, Patent Owner’s request for
`authorization to file a motion to amend is denied.
`The Final Written Decision in this case was issued on August 21,
`2017.2 Paper 48. Despite the posture of the case, and despite the fact Patent
`Owner chose not to file a motion to amend during trial, Patent Owner now
`seeks authorization to file a motion to amend. Patent Owner contends its
`request is supported by good cause because the recent decision in Aqua
`Products, Inc. v. Matal, No. 2015-1177, --- F.3d ---, 2017 WL 4399000
`(Fed. Cir. Oct. 4, 2017) (en banc) materially changed the law regarding
`motions to amend in inter partes reviews. According to Patent Owner, it did
`not previously have a “real” opportunity to amend the challenged patent
`during trial, whereas the holding of Aqua Products fundamentally changes
`the amendment process in a way that provides Patent Owner such an
`opportunity. Patent Owner further contends we have the authority to allow a
`motion to amend at this stage under the “good cause showing” provision in
`37 C.F.R. § 42.121(c).
`Petitioner contends that 35 U.S.C. § 316(d)(1) only permits motions to
`amend “[d]uring an inter partes review,” and 37 C.F.R. § 42.121(c) does not
`govern motions to amend in the first instance. Petitioner further contends
`that the Court of Appeals for the Federal Circuit granted the petition for
`rehearing en banc in Aqua Products prior to institution of the instant inter
`
`
`2 On September 19, 2017, Patent Owner filed a request for rehearing.
`Paper 49. Patent Owner’s request does not include any arguments that are
`relevant to the instant Order. A decision denying Patent Owner’s request is
`being entered concurrently with this Order.
`2
`
`
`
`
`Case IPR2016-00622
`Patent 7,149,511 B1
`
`partes review, so Patent Owner could have, but did not, file a motion to
`amend under 37 C.F.R. § 42.121(a) to preserve its rights in the event of a
`change in the law.
`We are not persuaded that a motion to amend should be authorized
`under the particular factual circumstances of this case. The provision Patent
`Owner relies upon to support the instant request, § 42.121(c), pertains to
`“[a]dditional” motions to amend, not a first motion to amend. In contrast,
`§ 42.121(a) provides for a first motion to amend that must be filed by the
`time that the patent owner response is filed, or a due date during trial set by
`the Board. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012) (relating § 42.121(a) to a “First Motion to Amend”
`and § 42.121(c) to an “Additional Motion to Amend”). In this case, Patent
`Owner did not file a motion to amend by the due date for doing so. See
`Paper 13, 6; Paper 26 (stipulating to a deadline of November 30, 2016). Due
`dates such as this are important in inter partes review proceedings because
`they “account[] for the complexity of the proceeding but ensur[e] that the
`trial is completed within one year of institution.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012); see also
`Paper 13 (setting deadlines for an opposition to the motion to amend to be
`filed by Petitioner and a reply to the opposition to be filed by Patent Owner).
`Accordingly, we do not agree that § 42.121(c) allows for a first motion to
`amend at this late juncture, regardless of whether Patent Owner shows good
`cause. In addition, we agree that Patent Owner did not avail itself of its
`opportunity to amend under § 42.121(a) during the pendency of this case.
`Although Patent Owner contends that “the central point” of this case
`relates to the claim term “downstream data,” and that disputes regarding this
`
`3
`
`
`
`
`Case IPR2016-00622
`Patent 7,149,511 B1
`
`term “could be directly addressed by a claim amendment,” the importance of
`the term “downstream data” has been known since at least the time of Patent
`Owner’s Preliminary Response and the Decision on Institution. See, e.g.,
`Paper 8, 18–20; Paper 12, 11–14. This predates the time that a motion to
`amend would have been due under § 42.121(a). Patent Owner could have,
`but did not, address the disputes regarding the term “downstream data”
`under the normal amendment process.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a
`motion to amend is denied.
`
`
`
`
`
`
`4
`
`
`
`
`Case IPR2016-00622
`Patent 7,149,511 B1
`
`PETITIONER:
`
`Megan Raymond
`Steven Baughman
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`mraymond@paulweiss.com
`sbaughman@paulweiss.com
`
`Andrew J. Sutton
`Richard McCaulley
`ROPES & GRAY LLP
`andrew.sutton@ropesgray.com
`richard.mccaulley@ropesgray.com
`
`Brian E. Ferguson
`Anish R. Desai
`Megan H. Wantland
`WEIL, GOTSHAL & MANGES, LLP
`Brian.Ferguson@weil.com
`Anish.Desai@weil.com
`Megan.Wantland@weil.com
`
`PATENT OWNER:
`
`Miranda Jones
`Michael Heim
`HEIM PAYNE & CHORUSH, LLP
`mjones@hpcllp.com
`mheim@hpcllp.com
`
`5
`
`
`
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