Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 13
`Entered: May 8, 2017
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`
`Case IPR2017-00114 (Patent 7,206,978 B2)1
`Case IPR2017-00116 (Patent 7,334,150 B2)
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. PARVIS, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PARVIS, Administrative Patent Judge.
`
`
`
`ORDER
`Guidance on Motion to Amend Claims
`37 C.F.R. § 42.121
`
`
`1 This order addresses issues that are the same in all identified cases. We exercise
`our discretion to issue one order to be filed in each case. The parties, however, are
`not authorized to use this style heading in subsequent papers.
`
`
`
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 13
`Entered: May 8, 2017
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`
`Case IPR2017-00114 (Patent 7,206,978 B2)1
`Case IPR2017-00116 (Patent 7,334,150 B2)
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. PARVIS, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PARVIS, Administrative Patent Judge.
`
`
`
`ORDER
`Guidance on Motion to Amend Claims
`37 C.F.R. § 42.121
`
`
`1 This order addresses issues that are the same in all identified cases. We exercise
`our discretion to issue one order to be filed in each case. The parties, however, are
`not authorized to use this style heading in subsequent papers.
`
`
`
`
`IPR2017-00114 (Patent 7,206,978 B2)
`IPR2017-00116 (Patent 7,334,150 B2)
`
`
`On Wednesday, May 3, 2017, counsel for Patent Owner requested a
`conference call with the panel to confer regarding an anticipated motion to
`amend. A conference call in IPR2016-01621, -01622, and -01623 was held
`on May 2, 2017 among the same counsel for the same parties. See, e.g.,
`Kingston Technology Co., Inc. v. Polaris Innovations Ltd., Case IPR2016-
`01621, Paper 16 (PTAB May 3, 2017). The parties were provided with
`verbal guidance on motions to amend during that call. Id. Because the
`instant proceedings involve the same parties and same counsel, we
`determine that the May 2nd call in IPR2016-01621, -01622, and -01623
`satisfies the “to confer” requirement of 37 C.F.R. § 42.121 with regard to
`filing of a motion to amend claims in the instant proceedings. Id. For the
`convenience of the parties, additional guidance regarding the requirements
`of a motion to amend is provided below.
`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
`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
`
`2
`
`
`
`IPR2017-00114 (Patent 7,206,978 B2)
`IPR2017-00116 (Patent 7,334,150 B2)
`
`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, 1303–05 (Fed. Cir. 2015). If the motion is granted, the proposed
`substitute claims will be added to the involved patent, without examination.
`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
`
`3
`
`
`
`IPR2017-00114 (Patent 7,206,978 B2)
`IPR2017-00116 (Patent 7,334,150 B2)
`
`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. Microsoft v. Proxyconn,
`789 F.3d at 1306–08 (affirming the Board’s denial of a motion to amend
`claims where the patent owner failed to establish the patentability of the
`substitute claims over the prior art of record); see also MasterImage 3D, Inc.
`v. RealD, Inc., Case IPR2015-00040, slip op. at 1–2 (PTAB July 15, 2015)
`(Paper 42) (precedential) (explaining that prior art of record includes any
`material art of record in the current proceeding, including art asserted in
`grounds on which the Board did not institute review, as well as material art
`in the prosecution of the patent).
`The motion should provide sufficient underlying facts regarding any
`feature added by the proposed substitute claim. For instance, it should be
`
`4
`
`
`
`IPR2017-00114 (Patent 7,206,978 B2)
`IPR2017-00116 (Patent 7,334,150 B2)
`
`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
`response to the petition. See 37 C.F.R. § 42.6(a)(3).
`We remind the parties that 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
`
`5
`
`
`
`IPR2017-00114 (Patent 7,206,978 B2)
`IPR2017-00116 (Patent 7,334,150 B2)
`
`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).
`For further guidance on a motion to amend, the panel directs the
`parties to the following:
`• Nichia Corp. v. Emcore Corp., Case IPR2012-00005 (PTAB June 3,
`2013) (Paper 27) (discussing written description requirement);
`• Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB
`June 11, 2013) (Paper 26) (setting forth considerations the Board typically
`makes when deciding on the motion);
`• Corning Optical Commc’ns RF, LLC, v. PPC Broadband, Inc., Case
`IPR2014-00441 (PTAB Oct. 30, 2014) (Paper 19) (providing an overview of
`the requirements for the motion);
`• MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB
`July 15, 2015) (Paper 42) (clarifying the scope of prior art to be addressed in
`the motion);
`• Int’l Flavors & Fragrances Inc. v. United States, Case IPR2013-
`00124 (PTAB May 20, 2014) (Paper 12) (granting-in-part patent owner’s
`motion to amend);
`• Riverbed Tech. Inc. v. Silver Peak Sys., Inc., Case IPR2013-00403
`(PTAB Dec. 30, 2014) (Paper 33), and Case IPR2013-00402 (PTAB Dec.
`30, 2014) (Paper 35) (granting-in-part patent owner’s motions to amend);
`• Google Inc. v. Contentguard Holdings, Inc., Case CBM2015-00040
`(PTAB June 21, 2016) (granting patent owner’s motion to amend);
`• Global Tel*Link Corp. v. Securus Techs., Inc., Case IPR2015-01225
`(PTAB Dec. 14, 2016) (Paper 45) (granting-in-part patent owner’s motion to
`
`6
`
`
`
`IPR2017-00114 (Patent 7,206,978 B2)
`IPR2017-00116 (Patent 7,334,150 B2)
`
`amend); and
`• Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766–67
`(Aug. 14, 2012) (Section II.G. Motions to Amend).
`Accordingly, it is
`ORDERED that the requirement “to confer” pursuant to 37 C.F.R.
`§ 42.121(a) is satisfied.
`
`PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`IPR37307-0008IP1@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`IPR@sjclawpc.com
`
`PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`
`7
`
`
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