`571-272-7822
`
`
`
` Paper No. 33
`
` Date Entered: March 16, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner,
`
`v.
`
`LEGEND3D, INC.,
`Patent Owner.
`
`______________________
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`
`__________________________________
`
`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`
`JIVANI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`A conference call in the above proceeding was held on March 13,
`
`
`
`2017, among respective counsel for the parties and Judges Pettigrew and
`
`Jivani. Prime Focus Creative Services Canada, Inc. (“Petitioner”) was
`
`represented by Mr. Joshua Glucoft. Legend3D, Inc. (“Patent Owner”) was
`
`represented by Mr. Joseph Mayo, Mr. Daniel N. Yannuzzi, and Mr. Trevor J.
`
`Quist. The call was requested by Patent Owner to discuss certain claim
`
`amendments it may submit in a motion to amend.
`
`
`
`Patent Owner indicated that it intended to propose one substitute
`
`claim for each of independent claims 1, 13, and 20 of the challenged patent,
`
`and one substitute claim for each challenged claim depending from claims 1
`
`and 13 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
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`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
`
`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 is reminded that it bears the burden of showing, on a
`
`claim by claim basis, “patentable distinction over the prior art of record and
`
`also prior art known to the patent owner.” Idle Free at 7. 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;
`
`any material art of record in the current proceeding,
`b.
`including art asserted in grounds on which the Board did not
`institute review; and
`
`any material art of record in any other proceeding before
`c.
`the Office involving the patent.
`
`MasterImage 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.
`
`
`
`2
`
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`It is, therefore,
`
`ORDER
`
`ORDERED that Patent Owner has satisfied the requirement of
`
`conferring with the Board prior to filing a motion to amend under 37 C.F.R.
`
`§ 42.121(a).
`
`.
`
`
`
`3
`
`
`
`
`4
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`
`FOR PETITIONER:
`
`Joshua Glucoft
`Jonathan Kagan
`IRELL & MANELLA LLP
`PrimeFocusIPR@irell.com
`
`
`
`
`PATENT OWNER:
`
`Joseph Mayo
`Danna Cotman
`ARC IP LAW, PC
`joe@arciplaw.com
`danna@arciplaw.com
`
`
`
`Daniel N. Yannuzzi
`Trevor J. Quist
`SHEPPARD MULLUIN LLP
`dyannuzzi@sheppardmullin.com
`tquist@sheppardmullin.com
`
`
`
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