Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 24
`Entered: January 16, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MLB ADVANCED MEDIA, L.P.,
`Petitioner,
`
`v.
`
`FRONT ROW TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01127
`Patent 8,583,027 B2
`____________
`
`Before JUSTIN T. ARBES, KERRY BEGLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Motions to Strike and
`Authorizing Re-Filing of Motion to Amend
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 24
`Entered: January 16, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MLB ADVANCED MEDIA, L.P.,
`Petitioner,
`
`v.
`
`FRONT ROW TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01127
`Patent 8,583,027 B2
`____________
`
`Before JUSTIN T. ARBES, KERRY BEGLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Motions to Strike and
`Authorizing Re-Filing of Motion to Amend
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`Pursuant to our authorization (Paper 18), Petitioner filed a Motion to
`Strike Patent Owner’s Motion to Amend (Paper 19), to which Patent Owner
`filed an Opposition (Paper 22), and a Motion to Strike Patent Owner’s
`Exhibits 2001–2036 (Paper 20), to which Patent Owner also filed an
`Opposition (Paper 21). For the reasons stated below, Petitioner’s Motions
`are granted, but Patent Owner is permitted to re-file its Motion to Amend.
`
`
`Motion to Strike Patent Owner’s Motion to Amend
`Patent Owner’s Motion to Amend (Paper 14) includes 24 pages of
`substantive argument, Appendices A–C showing clean and modified
`versions of Patent Owner’s proposed substitute claims, and Appendices
`D–F with claim charts listing the limitations of the proposed substitute
`claims in one column and quotations from various patent applications (with
`a number of explanatory parenthetical citations) in another column. Patent
`Owner relies on the cited excerpts in Appendices D–F to show written
`description support for the proposed substitute claims in the applications.
`See Paper 14, 6–8.
`Petitioner argues that, including Appendices D–F, Patent Owner’s
`Motion to Amend exceeds the 25-page limit set forth in 37 C.F.R.
`§ 42.24(a)(1)(vi). Paper 19, 1. Patent Owner responds that Appendices D–F
`are part of a “claim listing,” which is not included in the page count under
`§ 42.24(a)(1)(vi). Paper 22, 1–2. Patent Owner cites 37 C.F.R. § 42.121(b),
`which provides:
`A motion to amend claims must include a claim listing,
`which claim listing may be contained in an appendix to the
`motion, show the changes clearly, and set forth:
`
`
`
`2
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`(1) The support in the original disclosure of the
`patent for each claim that is added or amended; and
`(2) The support in an earlier-filed disclosure for
`each claim for which benefit of the filing date of the earlier
`filed disclosure is sought.
`According to Patent Owner, “everything after ‘must include a claim listing’”
`in § 42.121(b), including written description support for the proposed
`substitute claims, “necessarily describes characteristics of the claim listing
`itself.” Paper 22, 3–4. Patent Owner further relies on Cisco Systems, Inc. v.
`Focal IP, LLC, Case IPR2016-01257 (PTAB Mar. 21, 2017) (Paper 24)
`(“Cisco”), as allegedly supporting its reading of the rule. Paper 22, 1.
`A “claim listing,” as specified in § 42.121(b), is a listing of claims, in
`either original or modified form. A “claim listing” does not include
`argument or material from any other sources, such as patent applications or
`prior art; it merely reproduces claims. See Paper 13, 3 (advising the parties
`that “[a] claim listing, reproducing each proposed substitute claim, is
`required” for a motion to amend); 37 C.F.R. § 1.121(c) (describing a “claim
`listing” in the examination context as including “the text of the claims” with
`status indicators and markings identifying any changes). Claim charts, by
`contrast, “identify[] key features of a claim and compar[e] those features
`with specific evidence.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,764 (Aug. 14, 2012). Claim charts submitted as part of a motion
`“count towards applicable page limits.” Id. Also, Cisco does not support
`Patent Owner’s position, as the patent owner in that case “requested ten
`additional pages [for its motion to amend] or, in the alternative,
`authorization to address the requirement to show written description
`support” in an appendix that would not count toward the page limit, and the
`
`
`
`3
`
`
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`IPR2017-01127
`Patent 8,583,027 B2
`
`panel authorized the latter. Cisco at 2–3 (emphasis added). Patent Owner
`never sought or obtained such authorization in this proceeding.
`Accordingly, Appendices D–F are included in the page count of Patent
`Owner’s Motion to Amend, and the Motion exceeds the 25-page limit set
`forth in 37 C.F.R. § 42.24(a)(1)(vi) and will be stricken.
`In its Opposition, Patent Owner requests permission to re-file its
`Motion to Amend if the Motion is found defective, and submits
`Exhibit 2038, which is a revised 33-page version of the Motion with “no
`changes beyond moving the citations from [Appendices D–F] into the body
`of the Motion.”1 Paper 22, 5. Under the particular factual circumstances of
`this case, we are persuaded that allowing Patent Owner to re-file its Motion
`in the manner it proposes is appropriate, rather than merely striking the
`Motion, which would prevent Patent Owner from attempting to amend its
`claims in this proceeding. We also are persuaded that a limited extension of
`the page limit is warranted so that Patent Owner may include its alleged
`written description support in the Motion. Petitioner will be given an equal
`number of pages to respond. See 37 C.F.R. § 42.5(a).
`We note that Petitioner’s opposition to the Motion to Amend and
`Patent Owner’s reply currently are due on March 2 and April 2, 2018,
`respectively. Paper 10, 6. Should there be a need to adjust these dates given
`
`
`1 Patent Owner also filed, with its Opposition to the Motion to Strike, a
`second revised version of the Motion to Amend with “corrected”
`Appendices D–F removing “a few brief explanatory parentheticals.” See
`Paper 22, 2 n.1; Ex. 2037. Patent Owner did not obtain authorization to file
`either revised version of the Motion to Amend with its Opposition.
`Although we permit the first revised version, for future reference, the parties
`must obtain authorization before filing any paper that is not already
`authorized by rule or Board order. See 37 C.F.R. § 42.7(a).
`
`
`
`4
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`our decision herein to permit the revised Motion to Amend, the parties are
`reminded that they may stipulate to different dates for DUE DATES 2
`through 5 in the Scheduling Order (provided the dates are no later than DUE
`DATE 6) and, if they do so, the parties shall file promptly a notice of the
`stipulation.
`
`
`Motion to Strike Patent Owner’s Exhibits 2001–2036
`Patent Owner filed with its Motion to Amend and shortly thereafter a
`list of approximately 1,100 references (Exhibit 2001) and copies of a large
`subset of the foreign patents and non-patent literature references on the list
`that were in Patent Owner’s possession (Exhibits 2002–2036). Patent
`Owner states that the references are “art that has been identified or cited
`against [the challenged patent in this proceeding] and related applications,
`over the course of the fifteen year history of prosecution of the patent,
`associated litigation with Petitioner, and Petitioner-initiated inter partes
`reexaminations.” Paper 21, 1–2.
`As Petitioner points out, however, none of the materials are cited in
`Patent Owner’s Motion to Amend or any other paper in this proceeding, and
`thus there is no need to keep them in the record at this time. See Paper 20, 1.
`The list of references was provided to Petitioner. Should Petitioner refer to
`any of the references in its opposition to the Motion to Amend, or Patent
`Owner refer to any of them in its reply, those references should be filed as
`exhibits with the respective paper. See 37 C.F.R. 42.6(c) (“Each exhibit
`must be filed with the first document in which it is cited except as the Board
`may otherwise order.”).
`
`
`
`5
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`Finally, Patent Owner states that it submitted Exhibits 2001–2036 to
`comply with the duty of candor under 37 C.F.R. § 42.11(a). Paper 21, 1–2.
`Patent Owner expressly states, however, that it “does not believe that any of
`the listed references in Exhibits 2001–2036 are material to the patentability
`of the amended [claims],” and that the references are not even “relevant to
`this proceeding” for any other purpose. Id. at 2, 5. Patent Owner also
`analogizes the instant situation to submitting an Information Disclosure
`Statement (IDS) during examination. Id. at 1–2, 4. During examination,
`however, 37 C.F.R. § 1.56(a) only imposes “a duty to disclose to the Office
`all information known to [an individual associated with the filing and
`prosecution of a patent application] to be material to patentability . . . . There
`is no duty to submit information which is not material to the patentability of
`any existing claim.” Given Patent Owner’s representation that it believes
`the references are not material to patentability of the proposed substitute
`claims, and absent any additional explanation, we do not see a reason to
`keep the uncited exhibits in the record at this time.2
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Strike Patent Owner’s Motion
`to Amend (Paper 19) is granted;
`FURTHER ORDERED that Patent Owner’s original Motion to
`Amend (Paper 14) and second revised version of the Motion to Amend
`(Exhibit 2037) are expunged from the record of this proceeding;
`
`
`2 We previously granted Petitioner’s request that the deadline to object to
`Exhibits 2001–2036 under 37 C.F.R. § 42.64(b)(1) be extended. See
`Paper 18, 2, 4. That issue is now moot, given that the exhibits are being
`expunged.
`
`
`
`6
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`FURTHER ORDERED that Patent Owner shall file, within three
`business days of this Order, its first revised version of the Motion to Amend
`(Exhibit 2038) as a paper in this proceeding;
`FURTHER ORDERED that the page limit for Petitioner’s opposition
`to the Motion to Amend is 33 pages;
`FURTHER ORDERED that Petitioner’s Motion to Strike Patent
`Owner’s Exhibits 2001–2036 (Paper 20) is granted; and
`FURTHER ORDERED that Exhibits 2001–2036 are expunged from
`the record of this proceeding.
`
`
`
`
`7
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`PETITIONER:
`
`George C. Beck
`Chase J. Brill
`FOLEY & LARDNER LLP
`gbeck@foley.com
`cbrill@foley.com
`
`
`PATENT OWNER:
`
`Richard T. Black
`Benjamin J. Hodges
`Kevin Ormiston
`FOSTER PEPPER PLLC
`rich.black@foster.com
`
`Richard Krukar
`ORTIZ & LOPEZ, PLLC
`krukar@olpatentlaw.com
`
`
`
`
`8
`
`
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