Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 13
`Entered: December 7, 2017
`
`
`
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 13
`Entered: December 7, 2017
`
`
`
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`A conference call in the above proceeding was held on December 5,
`2017, among respective counsel for Petitioner and Patent Owner, and Judges
`Arbes, Begley, and McMillin. The call was requested by Patent Owner to
`satisfy the requirement of 37 C.F.R. § 42.121(a) to confer with the Board
`before filing a motion to amend.
`During the call, Patent Owner requested authorization to file a motion
`seeking (1) a limit on the number of prior art references that Petitioner may
`introduce in opposition to Patent Owner’s motion to amend, and (2) an
`increase in the page limit for Patent Owner’s reply to Petitioner’s opposition.
`See 37 C.F.R. § 42.20(a). Petitioner opposed both requests as premature,
`and stated that it may seek authorization later in the proceeding to file a
`sur-reply to Patent Owner’s reply. We informed the parties that all requests
`for relief regarding the opposition, reply, and any additional briefing are
`premature at this time, as Patent Owner has not yet filed its motion to amend
`with proposed substitute claims. Once Patent Owner does so, should either
`party believe that a departure from the usual procedures and page limits for
`motion to amend briefing is warranted, the party should request a conference
`call promptly to address the matter.
`We also discussed with the parties the related litigation involving the
`challenged patent. Specifically, the U.S. Court of Appeals for the Federal
`Circuit recently affirmed the district court’s decision concluding that all of
`the asserted claims are invalid under 35 U.S.C. § 101. Patent Owner stated
`that it had not yet determined whether it would file a petition for a writ of
`certiorari. We instructed the parties to notify the Board of any change in
`status of the related litigation, including if and when the judgment of
`invalidity becomes final.
`
`
`
`2
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`Finally, regarding the motion to amend, we refer the parties to
`Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), and the
`Memorandum re: Guidance on Motions to Amend in view of Aqua Products
`(Nov. 21, 2017) (available at https://www.uspto.gov/sites/default/files/
`documents/guidance_on_motions_to_amend_11_2017.pdf). We also
`provide the following guidance.
`A motion to amend only may cancel claims or propose substitute
`claims. See 35 U.S.C. § 316(d)(1); 37 C.F.R. § 42.121(a)(3). A request to
`cancel claims will not be regarded as contingent. However, we shall treat a
`request to substitute claims as contingent. That means that a proposed
`substitute claim will be considered only if the original claim it replaces is
`determined to be unpatentable.
`A claim listing, reproducing each proposed substitute claim, is
`required. 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 that 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.
`Patent Owner may only propose a reasonable number of substitute
`claims. 35 U.S.C. § 316(d)(1)(B). To the extent Patent Owner seeks to
`propose more than one substitute claim for each original claim, Patent
`Owner shall explain in the motion to amend the need for the additional
`
`
`
`3
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`claims and why the number of proposed substitute claims is reasonable. See
`35 U.S.C. § 316(d)(1)(B); 37 C.F.R. § 42.121(a)(3). Any proposed
`amendment may not enlarge the scope of the claims of the patent or
`introduce new matter. 35 U.S.C. § 316(d)(3).
`Finally, Patent Owner must show written description support in the
`original specification for each proposed substitute claim, and support in any
`earlier-filed disclosure for each proposed substitute claim for which benefit
`of the filing date of the earlier filed disclosure is sought. 37 C.F.R.
`§ 42.121(b). Citation should be made to the original disclosure of the
`application, as filed, rather than to the patent as issued. Also, Patent Owner
`must show written description support for the entire proposed substitute
`claim and not just the features added by the amendment. This applies
`equally to independent claims and dependent claims, even if the only
`amendment to the dependent claims is in the identification of the claim from
`which it depends.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner has satisfied the conference
`requirement of 37 C.F.R. § 42.121(a);
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a motion seeking a limit on the number of prior art references that
`Petitioner may introduce in opposition to Patent Owner’s motion to amend,
`and an increase in the page limit for Patent Owner’s reply to Petitioner’s
`opposition, is denied without prejudice; and
`FURTHER ORDERED that the parties shall notify the Board
`promptly of any change in status of the related litigation, by filing updated
`mandatory notice information under 37 C.F.R. § 42.8.
`
`
`
`4
`
`
`
`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
`
`
`
`
`5
`
`
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