Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 23
`Entered: March 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-012571
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Guidance on Motion to Amend Claims
`37 C.F.R. § 42.121
`
`
`On March 16, 2017, a conference call was held with Judges Medley,
`Chang, and Parvis and counsel for the parties in attendance. Patent Owner
`requested the conference call to satisfy the requirement of
`
`
`1 This Order addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Order to be filed in all of the cases.
`The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`571.272.7822
`
`
`
`
`
`Paper 23
`Entered: March 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-012571
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Guidance on Motion to Amend Claims
`37 C.F.R. § 42.121
`
`
`On March 16, 2017, a conference call was held with Judges Medley,
`Chang, and Parvis and counsel for the parties in attendance. Patent Owner
`requested the conference call to satisfy the requirement of
`
`
`1 This Order addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Order to be filed in all of the cases.
`The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`37 C.F.R. § 42.121(a) that it confer with the Board prior to filing of a motion
`to amend claims. Additionally, Patent Owner requested ten additional pages
`in each motion to amend or, in the alternative, authorization to address the
`requirement to show written description support under 37 C.F.R. § 42.121(b)
`in a claim listing appendix.
`We provided the parties with verbal guidance regarding a motion to
`amend claims and, for the reasons discussed below, granted only Patent
`Owner’s request for authorization to address the requirement to show written
`description support under 37 C.F.R. § 42.121(b) in a column of a claim chart
`in an appendix to the motion to amend. The aforementioned appendix must
`contain only citations and exact text of the specification showing written
`description in the specification for each claim limitation of each proposed
`substitute claim in accordance with 37 C.F.R. § 42.121(b). For the
`convenience of the parties, additional guidance regarding the requirements
`of a motion to amend also is provided below.
`Page Limits and Appendices
`The motion to amend, as well as any opposition to the motion to
`amend, each are limited to twenty-five (25) pages; Patent Owner’s reply to
`an opposition to the motion to amend is limited to twelve (12) pages; and the
`required claim listing may be contained in an appendix to the motion to
`amend, and does not count toward the page limit of the motion.
`See 37 C.F.R. § 42.24(a)(1)(vi), (b)(3), (c)(3); 37 C.F.R. § 42.121(b). Patent
`Owner requested ten additional pages or, in the alternative, authorization to
`address the requirement to show written description support for each
`proposed substitute claim under 37 C.F.R. § 42.121(b) in a claim listing
`appendix to the motion to amend that does not count against the page limit.
`
`
`
`2
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`Patent Owner argued that the petitions collectively include numerous prior
`art of record, requiring a lengthier explanation in a motion to amend. Patent
`Owner suggested that either the ten additional pages or a claim
`listing/written description support appendix would provide sufficient relief.
`Petitioner opposed Patent Owner’s request for additional pages, but did not
`oppose Patent Owner’s request for the aforementioned appendix.
`During the call, upon consideration of the foregoing, we authorized
`Patent Owner to address the requirement to show written description support
`for each proposed substitute claim in accordance with 37 C.F.R. § 42.121(b)
`in a claim listing appendix to the motion to amend that does not count
`toward the page limit of the motion. We cautioned that Patent Owner should
`not include in its appendix any argument or characterizations in support of
`written description. Patent Owner may reproduce only exact text of the
`specification alongside the corresponding citations. We deny Patent
`Owner’s request for additional pages as no longer needed in light of our
`authorization of Patent Owner’s alternative request for filing the appendix.
`Guidance Regarding Requirements of a Motion to Amend
`A motion to amend claims only may cancel claims or propose
`substitute claims. See 37 C.F.R. § 42.121(a)(3). A request to cancel claims
`will not be regarded as contingent. However, we shall treat the request to
`substitute claims as contingent. That means a proposed substitute claim will
`be considered only if the original patent claim it replaces is determined
`unpatentable or is canceled by Patent Owner.
`A proposed substitute claim should be responsive to the ground of
`unpatentability applicable to the original patent claim for which it is a
`substitute, and may not enlarge the scope of the claim or introduce new
`
`
`
`3
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`matter. See 37 C.F.R. § 42.121(a)(2). The presumption is that only one
`substitute claim is needed for each original patent claim. See 37 C.F.R.
`§ 42.121(a)(3). This requirement is viewed on a per claim basis, and the
`proposed substitute claim must be traceable back to the original patent claim
`that it is intended to replace. Generally, the proposed substitute claim
`should not eliminate any feature or element of the original patent claim
`which it is intended to replace. If the Patent Owner proposes more than one
`substitute claim for a particular patent claim, the motion should articulate a
`special circumstance to justify the request.
`A claim listing, reproducing each proposed substitute claim, is
`required. See 37 C.F.R. § 42.121(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 Patent Owner intends as dependent from a proposed
`substitute independent claim. For each proposed substitute claim, the
`motion must show, clearly, the changes of the proposed substitute claim with
`respect to the original patent claim which it is intended to replace. No
`particular form is required, but use of brackets to indicate deleted text and
`underlining to indicate inserted text is suggested.
`As the moving party, Patent Owner bears the burden of proof to
`establish that it is entitled to the relief requested in the motion to amend. See
`37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but
`occurs only upon Patent Owner demonstrating the patentability of each
`proposed substitute claim. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1303–08 (Fed. Cir. 2015). If the motion is granted, the proposed
`substitute claims will be added to the involved patent, without examination.
`
`
`
`4
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`Accordingly, Patent Owner must show patentability, in general.
`In the motion to amend, Patent Owner must show written description
`support in the specification for each proposed substitute claim. See 37
`C.F.R. § 42.121(b). Importantly, citation should be made to the original
`disclosure of the application, as filed, rather than to the patent as issued.
`Also, it is inadequate to show written description support for just the feature
`added by the proposed substitute claim. Instead, Patent Owner must show
`written description support for the entire proposed substitute claim.
`If a new term is used in a proposed substitute claim, the meaning of
`which reasonably can be anticipated as subject to dispute, Patent Owner
`should provide a proposed claim construction in the motion to amend. With
`regard to claim construction, a mere statement that a certain term should be
`construed according to its plain and ordinary meaning is unhelpful. That
`plain and ordinary meaning should be provided in the motion, together with
`the supporting evidence.
`Additionally, Patent Owner must show patentability over the prior art
`that is relevant to the substitute claims, including prior art of record and
`prior art known to Patent Owner, and not just over the references applied by
`the Petitioner against the original patent claims. Prior art of record includes
`any material art in the prosecution history of the patent; any material art of
`record in the current proceeding, including art asserted in grounds on which
`the Board did not institute review; and any material art of record in any other
`proceeding before the Office involving the patent. See MasterImage 3D,
`Inc. v. RealD, Inc., Case IPR2015-00040, slip op. at 2–3 (PTAB July 15,
`2015) (Paper 42) (precedential). The reference to “prior art known to the
`patent owner” should be understood as no more than the material prior art
`
`
`
`5
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`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.
`The motion should provide sufficient underlying facts regarding any
`feature added by the proposed substitute claim. For instance, it should be
`revealed whether the feature was previously known anywhere, in whatever
`setting, and whether or not the feature was known in combination with any
`of the other elements in the claim. If any such combination was known, the
`motion should explain the surrounding facts in that regard, and why it would
`not have been obvious for one with ordinary skill in the art to adapt that
`knowledge for use with the rest of the claim elements.
`Patent Owner is not expected to know everything that a hypothetical
`person of ordinary skill in the art is presumed to know, but Patent Owner is
`expected to reveal what it does know, to the extent that it is relevant. For
`instance, the motion to amend should include a discussion of the ordinary
`skill in the art, with particular focus on the feature added to provide the basis
`of patentable distinction. In that regard, it would not be meaningful to say
`that a person of ordinary skill in the art possesses certain years of education
`and certain years of experience. Rather, the discussion should be specific
`about the technical knowledge pertaining to the feature added. Testimony
`filed with the motion also can explain the level of ordinary skill in the art
`and distinguish the substitute claims over the known art. Conclusory
`statements to the effect that no prior art known to Patent Owner renders
`obvious the proposed substitute claims, or that the closest prior art is the
`references in the record, are not meaningful. In addition, the motion to
`amend may not incorporate by reference arguments made in Patent Owner’s
`
`
`
`6
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`response to the petition. See 37 C.F.R. § 42.6(a)(3).
`For further guidance on a motion to amend, the panel directs the
`parties to the following: Int’l Flavors & Fragrances Inc. v. United States,
`Case IPR2013-00124 (PTAB May 20, 2014) (Paper 12); Idle Free Sys., Inc.
`v. Bergstrom, Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26);
`Nichia Corp. v. Emcore Corp., Case IPR2012-00005 (PTAB June 3, 2013)
`(Paper 27); and MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040
`(PTAB July 15, 2015) (Paper 42) (precedential).
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the requirement to confer pursuant to
`37 C.F.R. § 42.121(a) is satisfied;
`FURTHER ORDERED that Patent Owner is authorized to address the
`requirement to show written description support for each proposed substitute
`claim in accordance with 37 C.F.R. § 42.121(b) in a claim listing appendix
`to the motion to amend, which contains only citations and exact text of the
`specification, but no argument; and that appendix does not count toward the
`page limit of the motion; and
`FURTHER ORDERED that, in light of the authorization of a claim
`listing/written description support appendix, Patent Owner’s request for ten
`additional pages for each contingent motion to amend is dismissed as moot.
`
`
`
`
`7
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`PETITIONER:
`
`Wayne Stacy
`Sarah Guske
`wayne.stacy@bakerbotts.com
`sarah.guske@bakerbotts.com
`
`
`
`PATENT OWNER:
`
`Brent Bumgardner
`John Murphy
`brent@nelbum.com
`murphy@nelbum.com
`
`
`
`8
`
`
`
`APPENDIX2
`
`Inter Partes Review
`IPR2016-01258
`IPR2016-01262
`IPR2016-01257
`IPR2016-01260
`IPR2016-01261
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`
`
`U.S. Patent No.
`7,764,777 B2
`
`8,457,113 B2
`
`
`
`
`
`
`2 Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of
`Florida, Inc., and Birch Communications are Petitioner in IPR2016-01261,
`and -01262.
`
`YMax Corporation is Petitioner in IPR2016-01258 and -01260.
`
`Cisco Systems, Inc. is Petitioner in IPR2016-01257.
`9
`
`
`
`
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