Trials@uspto.gov
`571-272-7822
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`Paper No. 31
` Entered: September 25, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORP.,
`
`Petitioner,
`
`v.
`
`IDEMIA IDENTITY & SECURITY USA LLC1
`and L-1 SECURE CREDENTIALING, LLC
`
`Patent Owner.
`____________
`
`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`____________
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`ORDER
`Granting- and Denying-in-Part Request to
`Submit Additional Motion to Amend
`37 C.F.R. § 42.121(c)
`
`
`
`1 Formerly known as MorphoTrust USA, LLC according to Patent Owner.
`See IPR2017-01938, Paper 14. Patent Owner filed a similar paper in each
`case.
`
`1
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`I. INTRODUCTION
`
`Per Patent Owner’s email2 of September 18, 2018 seeking a
`
`teleconference, the panel held a teleconference on September 19, 2018
`
`with the parties to discuss Patent Owner’s request to file a new (substitute)
`
`claims appendix in response to Petitioner’s Opposition to Patent Owner’s
`
`Motions to Amend filed August 30, 2018 in Cases IPR2017-01938,
`
`IPR2017-01939, and IPR2017-019403 (collectively “Oppositions”).4 A
`
`court reporter transcribed the conference call. The party who hired the court
`
`reporter shall file a copy of the transcript in each of the proceedings.
`
`II. ANALYSIS
`
`In IPR2017-01940, Patent Owner submitted the following as one of
`
`its proposed substitute claims in its Motion to Amend (with underlining
`
`indicating inserted text and double brackets indicating deleted text):
`
`11. (Substitute for claim 3, if found unpatentable) The
`
`identity document of claim [[1]] 9 in which at least one layer
`comprises a polycarbonate, and wherein the at least one raised
`feature comprises reflecting surfaces that are not parallel to the
`nominal top surface of the outer top laminate layer such that an
`optically variable quality is produced.
`
`IPR2017-01940, Paper 19, Claims Appendix.
`
`
`2 The panel herewith files this email as Exhibit 3003 in IPR2017-01938 and
`IPR2017-01939, and as Exhibit 3002 in IPR2017-01940.
`
`3 Although Patent Owner also includes IPR2017-01941 in the subject matter
`line of the email, Patent Owner clarified during the teleconference that its
`request applies only to IPR2017-01938, IPR2017-01939, and IPR2017-
`01940.
`
`4 Cases IPR2017-01938 and IPR2017-01939 involve the same issue. We
`address specifically IPR2017-01938 herein and reach the same
`determination with respect to IPR2017-01939.
`
`2
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`
`
`During the conference call, Patent Owner requested permission to file
`
`a new substitute claim 11, deleting “, and wherein the at least one raised
`
`feature comprises reflecting surfaces that are not parallel to the nominal top
`
`surface of the outer top laminate layer such that an optically variable quality
`
`is produced” from originally proposed substitute claim 11 (reproduced
`
`above). Patent Owner made this request in response to an assertion by
`
`Petitioner in its Opposition to the Motion to Amend that claim 11 is
`
`indefinite. IPR2017-01940, Paper 25 (“’40Opp.” or “’40Opposition”), 8.
`
`
`
`In IPR2017-01938, Patent Owner submitted the following as two of
`
`its proposed substitute claims in its Motion to Amend (again, with
`
`underlining indicating inserted text and double brackets indicating deleted
`
`text):
`
`21. (Substitute for claim 1, if found unpatentable) A
`
`method of producing a security feature in an identification
`document comprising:
`
`providing a core including a top surface and a bottom
`surface;
`
`laminating a first laminate in contact with the top surface;
`and
`laminating a second laminate in contact with the bottom
`
`surface, the laminated core comprising the identification
`document, the identification document having a top side and a
`bottom side respectively corresponding to the core’s top and
`bottom side, the top side having a top surface; and
`
`laser etching a pattern of raised features into the [[top
`surface of the identification document]] first laminate, said raised
`features extending above a nominal top surface of the first
`laminate to form reflecting surfaces that are not parallel to the
`nominal top surface of the first laminate and are[[;
`
`wherein the pattern includes visual properties, and
`wherein the visual properties comprise a characteristic of]] not
`[[being]] visible when viewed straight on.
`
`
`
`3
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`22. (Substitute for claim 2, if found unpatentable) The
`
`method of claim [[1]] 21, wherein the visual properties comprise
`a characteristic of resisting image capture by photocopying.
`
`IPR2017-01938, Paper 18, Claims Appendix.
`
`
`
`During the conference call, Patent Owner requested permission to file
`
`a new proposed substitute claim 22, essentially substituting “raised features
`
`include” for “visual properties comprise.”5 Patent Owner made the request
`
`in response to an assertion by Petitioner in its Opposition to the Motion to
`
`Amend that claim 22 is indefinite. IPR2017-01938, Paper 23 (“’38Opp.” or
`
`“’38Opposition”), 10 (alleging “visual properties” lacks antecedent basis).
`
`
`
`In the email and essentially during the conference call, Patent Owner
`
`characterized “the basis for the indefiniteness []as a typographical error in
`
`the language of a dependent claim causing an antecedent basis
`
`issue.” IPR2017-01938, Ex. 3003; IPR2017-01940, Ex. 3002; see supra
`
`note 2. Petitioner responded that the proposed claim changes involve more
`
`than mere typographical errors. Petitioner explained it would need time to
`
`consider whether more briefing would be required to address whether the
`
`subject matter of substitute claim 22 in IPR2017-01938 and IPR2017-01939,
`
`and substitute claim 11 in IPR2017-01940, if amended as Patent Owner
`
`proposes, would have been obvious (which Petitioner asserted as to the
`
`originally proposed substitute claims in its Oppositions). See ’38Opp. 18;
`
`’40Opp. 17–18.
`
`
`
`For example, with respect to claim 11, Petitioner argued that omitting
`
`the noted claim phrase creates a broader claim that may require a different
`
`obviousness analysis than Petitioner originally presented in the
`
`’40Opposition. Petitioner similarly argued, with respect to claim 22, that
`
`
`5 Patent Owner’s specific proposal will be reflected in the transcript.
`
`4
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`changing claim 22 in the manner proposed by Patent Owner may require a
`
`different analysis as compared to its original allegations of obviousness in
`
`the ’38Opposition.
`
`
`
`Petitioner ordinarily bears the burden of showing the unpatentability
`
`of the substitute claims.6 In Petitioner’s view, Patent Owner essentially
`
`requests authorization to file a second motion to amend, which requires a
`
`showing of “good cause.” 37 C.F.R. § 42.121(c). Patent Owner argued
`
`during the call that its proposed changes constitute typographical changes,
`
`not substantive changes, such that Patent Owner need not show good cause.
`
`Patent Owner alternatively argued that if the proposed changes involve
`
`substantive changes, good cause exists to allow Patent Owner to make
`
`minimal changes to the claims to correct inadvertent errors.
`
`
`
`As Petitioner recognizes, absent agreement by the parties, 37 C.F.R.
`
`§ 42.121(c) requires a showing of good cause to submit an additional motion
`
`to amend:
`
`(c) Additional motion to amend. In addition to the
`
`requirements set forth in paragraphs (a) and (b) of this section,
`any additional motion to amend may not be filed without Board
`authorization. An additional motion to amend may be authorized
`when there is a good cause showing or a joint request of the
`petitioner and the patent owner to materially advance a
`settlement. In determining whether to authorize such an
`additional motion to amend, the Board will consider whether a
`petitioner has submitted supplemental information after the time
`
`
`6
` “[A]s a result of the current state of the law and USPTO rules and
`guidance, the burden of persuasion will ordinarily lie with the petitioner to
`show that any proposed substitute claims are unpatentable by a
`preponderance of the evidence.” Western Digital Corp. v. SPEX Tech., Inc.,
`Case IPR2018-00082 & 84, slip op. at 4 (PTAB April 25, 2018)
`(informative).
`
`
`5
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`period set for filing a motion to amend in paragraph (a)(1) of
`this section.
`Id. (emphases added).
`
` Petitioner raises a fair point with respect to claim 22, because if we
`
`grant Patent Owner’s request, at a minimum, the claim may raise claim
`
`interpretation issues not contemplated based on the proposed claim additions
`
`(i.e., the interpretation of “raised features” and its relation to the surrounding
`
`claim language and antecedent language in claim 21). With respect to claim
`
`11, however, the proposed deletion simplifies issues, and reverts the claim
`
`back to its original form as issued (albeit with a new claim dependency),
`
`potentially eliminating any allegation of indefiniteness. In addition, in
`
`opposition to Patent Owner’s Motion to Amend, Petitioner separately
`
`addresses the claim limitation remaining after the proposed deletion (i.e., the
`
`“polycarbonate” limitation). See ’40Opp. 17 (asserting “in view of Gunn, it
`
`would have been obvious to a POSITA to implement one of the layers with
`
`polycarbonate, which was commonly used at the time for identification
`
`cards”). Under these circumstances, it appears that if we grant Patent
`
`Owner’s request, the patentability issues with respect to claim 11 probably
`
`become simpler and may not require any further briefing or analysis by
`
`Petitioner, whereas this does not appear to be the case with respect to claim
`
`22.
`
`
`
`During the call, Petitioner cited Activision Blizzard, Inc. v.
`
`Acceleration Bay, LLC, Case IPR2015-01951 (Nov. 8, 2016 PTAB) (Paper
`
`70), in support of its position that substantive changes involve a second
`
`motion to amend, which require a showing of good cause. In that case, the
`
`panel noted the following:
`
`Among the factors the Board considers in determining whether
`to authorize a second motion to amend are the time remaining for
`
`6
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`trial and whether a petitioner has submitted supplemental
`information after the time period set for filing a motion to amend.
`See Avaya, slip op. at 3 (citing Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012)).
`
`Id. at 6 (citing Avaya Inc. v. Network-1 Sec. Solutions, Inc., Case IPR2013-
`
`00071 (PTAB Oct. 17, 2013) (Paper 54)).
`
`
`
`Similar (in some respects) to the timing involved here, the Activision
`
`panel stated
`
`Patent Owner apparently noticed the alleged error only after
`reviewing Petitioner’s Opposition to Patent Owner’s Motion to
`Amend in each case, approximately two weeks after the
`Oppositions were filed. At this late date, after all substantive
`papers in these proceedings have been filed, and the oral hearing
`is only a month away, Patent Owner has not shown that good
`cause exists for us to grant its request.
`
`Id.
`
`
`
`Here, Petitioner did not submit supplemental information, factoring
`
`against a showing of good cause per 37 C.F.R. § 42.121(c). On the other
`
`hand, the parties filed most of the substantive papers, with Patent Owner’s
`
`response to Petitioner’s Opposition, a possible sur-reply by Patent Owner,
`
`and motions to exclude and oppositions thereto by each party, remaining for
`
`potential filing in each case. An oral hearing (if requested) will occur in
`
`roughly two months (on November 15, 2018), which provides more leeway
`
`than the one month involved in Activision.
`
`
`
`Allowing Patent Owner to alter the amendments a second time will
`
`require entertaining at the least, an argument to allow additional briefing by
`
`Petitioner, which then will require as a distinct probability, at least the
`
`question of further briefing by Patent Owner. This potential additional
`
`briefing, however, appears to involve claim 22 as a higher probability than it
`
`does with respect to claim 11, for the reasons explained above.
`
`7
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`
`
`Weighing the totality of circumstances outlined above, Patent Owner
`
`shows requisite good cause for submitting a second substitute claims
`
`appendix with respect to claim 11 but not with respect to claim 22.
`
`III. ORDER
`
`
`
`ORDERED that Patent Owner’s request to file a second substitute
`
`claims appendix in IPR2017-01938 and IPR2017-01939 is denied, but in
`
`IPR2017-1940 is granted; and
`
`
`
`ORDERED that within three business days of the filing of the instant
`
`Order, Patent Owner may file a second substitute claims appendix in
`
`IPR2017-1940.7
`
`
`
`
`
`
`
`7 The second substitute claims appendix shall refer to the instant Order as
`authorizing its filing and shall not include additional argument or evidence.
`
`8
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`
`PETITIONER:
`
`Lionel M. Lavenue
`Guang-Yu Zhu
`David C. Seastrunk
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`guang-yu.zhu@finnegan.com
`david.seastrunk@finnegan.com
`rachel.emsley@finnegan.com
`
`
`PATENT OWNER:
`
`Scott McKeown
`ROPES & GRAY LLP
`Scott.McKeown@ropesgray.com
`
`Marc W. Vander Tuig
`Richard L. Brophy
`James M. Heinen, Jr.
`Patrick W. Rasche
`ARMSTRONG TEASDALE LLP
`mvandertuig@armstrongteasdale.com
`rbrophy@armstrongteasdale.com
`jheinen@amstrongteasdale.com
`prasche@armstrongteasdale.com
`
`9
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`