Paper No. 13
`Trials@uspto.gov
`571-272-7822 Entered: April 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Information and Guidance on Motions to Amend
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order applies to each referenced case. The parties are not authorized
`to use this heading style.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Information and Guidance on Motions to Amend
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order applies to each referenced case. The parties are not authorized
`to use this heading style.
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`This Order provides information and guidance on motions to amend to
`Patent Owner in the event Patent Owner elects to file a motion to amend.
`This information is being provided as general guidance only, and should not
`be interpreted as a suggestion or request to file a motion to amend. If Patent
`Owner choses to file a motion to amend, Patent Owner still must confer with
`the Board regarding a motion to amend. 37 C.F.R. § 42.121(a). Unless the
`parties stipulate otherwise, a motion to amend must be filed by DUE
`DATE 1 set forth in the Scheduling Order.
`As provided by Congress, patent owners are entitled to file a motion
`to amend in inter partes reviews. Specifically, 35 U.S.C. § 316(d) states:
`
`(d) Amendment of the Patent. –
`(1) IN GENERAL. – During an inter partes review
`instituted under this chapter, the patent owner may file 1 motion
`to amend the patent in 1 or more of the following ways:
`(A) Cancel any challenged patent claim.
`(B) For each challenged claim, propose a
`reasonable number of substitute claims.
`
`
`
`* * * *
`(3) SCOPE OF CLAIMS. – An amendment under this
`subsection may not enlarge the scope of the claims of the patent
`or introduce new matter.
`Congress also authorized the Director to set forth “standards and
`procedures” for allowing a patent owner to move to amend, to cancel a
`challenged claim, or propose a reasonable number of substitute claims.
`35 U.S.C. § 316(a)(9). A regulation directed to filing motions to amend
`claims in an inter partes review is 37 C.F.R. § 42.121.
`
`2
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`1. Contingent Motions to Amend
`A motion to amend claims may cancel claims and/or propose
`substitute claims. 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
`ordinarily treat a request to substitute claims as contingent. That means a
`proposed substitute claim normally will be considered only if a
`preponderance of the evidence establishes that the original patent claim it
`replaces is unpatentable. A patent owner should adopt a claim-by-claim
`approach to specifying the contingency of substitution, e.g., which claim for
`which claim and in what circumstance.
`
`2. Burden of Persuasion
`In October 2017, the U.S. Court of Appeals for the Federal Circuit
`issued an en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017) (“Aqua Products”), addressing the burden of persuasion that
`the Board applies when considering the patentability of substitute claims
`presented in a motion to amend. In November 2017, the Board issued a
`memorandum providing further guidance on motions to amend in view of
`that decision. See Memorandum “Guidance on Motions to Amend in view
`of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/
`files/documents/guidance_on_motions_to_amend_11_2017.pdf) (“Board’s
`Memorandum”). Subsequent to the issuance of Aqua Products and the
`Board’s Memorandum, the Federal Circuit issued a decision in Bosch
`Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
`(“Bosch”), as well as a follow-up Order amending that decision on
`
`3
`
`
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`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`rehearing. See Bosch Auto. Serv. Sols., LLC v. Iancu, Order on Petition for
`Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018).
`In accordance with Aqua Products, the Board’s Memorandum, and
`Bosch, a patent owner does not bear the burden of persuasion to demonstrate
`the patentability of substitute claims presented in a motion to amend.
`Rather, as 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. The Board itself also may justify any
`finding of unpatentability by reference to evidence of record in the
`proceeding, as it must do when a petitioner ceases to participate, as further
`noted in Aqua Products and Bosch. Bosch, 878 F.3d at 1040 (citing Aqua
`Products, 872 F.3d at 1311 (O’Malley, J.)). Thus, the Board determines
`whether substitute claims are unpatentable by a preponderance of the
`evidence based on the entirety of the record, including any opposition made
`by the petitioner.
`Before considering the patentability of any substitute claims, however,
`the Board first must determine whether the motion to amend meets the
`statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and
`37 C.F.R. § 42.121. Those requirements and other guidance are discussed
`below.
`
`3. Reasonable Number of Substitute Claims
`By statute, in a motion to amend, a patent owner may cancel
`challenged claims or propose a reasonable number of substitute claims for
`each challenged claim. 35 U.S.C. § 316(d)(1)(B). There is a rebuttable
`presumption that a reasonable number of substitute claims per challenged
`
`4
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`claim is one (1) substitute claim. 37 C.F.R. § 42.121(a)(3). A patent owner
`may rebut this presumption upon demonstration of a need to present more
`than one substitute claim per challenged claim. Id. (“A motion to amend
`may cancel a challenged claim or propose a reasonable number of substitute
`claims. The presumption is that only one substitute claim would be needed
`to replace each challenged claim, and it may be rebutted by a demonstration
`of need.”). Thus, to the extent a patent owner seeks to propose more than
`one substitute claim for each cancelled claim, the patent owner should
`explain in the motion to amend the need for the additional claims and why
`the number of proposed substitute claims is reasonable.
`The determination of whether the number of proposed substitute
`claims is reasonable is made on a claim-by-claim basis, consistent with the
`statutory language that refers to a reasonable number of substitute claims for
`“each” challenged claim. 35 U.S.C. § 316(d)(1)(B); 37 C.F.R.
`§ 42.121(a)(3). To help the Board determine whether a motion to amend
`meets the requirement, the motion should, for each proposed substitute
`claim, specifically identify the challenged claim that it is intended to replace.
`All proposed claims should be traceable to an original challenged claim as a
`proposed substitute claim for that challenged claim.
`
`4. Respond to a Ground of Unpatentability Involved in the Trial
`37 C.F.R. § 42.121(a)(2)(i) states that “[a] motion to amend may be
`denied where . . . [t]he amendment does not respond to a ground of
`unpatentability involved in the trial.” Thus, in considering the motion, we
`review the entirety of the record to determine whether a patent owner’s
`amendments respond to a ground of unpatentability involved in the trial.
`
`5
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`The rule does not require, however, that every word added to or
`removed from a claim in a motion to amend be solely for the purpose of
`overcoming an instituted ground. Additional modifications that address
`potential 35 U.S.C. § 101 or § 112 issues, for example, are not precluded by
`rule or statute. Thus, once a proposed claim includes amendments to
`address a prior art ground in the trial, a patent owner also may include
`additional limitations to address potential § 101 or § 112 issues, if necessary.
`Allowing an amendment to address such issues, when a given claim is being
`amended already in view of a 35 U.S.C. § 102 or § 103 ground, serves the
`public interest by helping to ensure the patentability of amended claims. See
`Veeam Software Corp. v. Veritas Techs., LLC, Case IPR2014-00090, slip op.
`at 26–29 (PTAB July 17, 2017) (Paper 48). In addition, allowing such
`amendments helps ensure a “just” resolution of the proceeding and fairness
`to all parties. 37 C.F.R. § 42.1(b).
`As stated in 35 U.S.C. § 316(d)(3), an “amendment . . . may not
`enlarge the scope of the claims of the patent.” See also 37 C.F.R.
`§ 42.121(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he
`amendment seeks to enlarge the scope of the claims of the patent.”). Thus, a
`patent owner may not seek to broaden a challenged claim in any respect, in
`the name of responding to an alleged ground of unpatentability. For
`example, a proposed substituted claim may not remove a feature of the
`claim, thus broadening it. Rather, a proper substitute claim under
`§ 42.121(a)(2)(i) must narrow the scope of the challenged claim it replaces
`in a way that is responsive to a ground of unpatentability involved in the
`trial. For example, a proposed substitute claim adding a novel and
`
`6
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`nonobvious feature or combination to avoid the prior art in an instituted
`ground of unpatentability will narrow the scope of the claim.
`
`5. Scope of the Claims
`A motion to amend may not present substitute claims that enlarge the
`scope of the claims of the challenged patent or introduce new subject matter.
`35 U.S.C. § 316(d); 37 C.F.R. § 41.121(a)(2)(ii). New matter is any
`addition to the claims without support in the original disclosure. See
`TurboCare Div. of Demag Delaval Turbomach. v. Gen. Elec. Co., 264 F.3d
`1111, 1118 (Fed. Cir. 2001) (“When [an] applicant adds a claim . . . the new
`claim[] . . . must find support in the original specification.”). Normally, a
`claim element without support in the original disclosure (i.e., the application
`as originally filed) merits a rejection under 35 U.S.C. § 112 for lack of
`written description support. See, e.g., In re Rasmussen, 650 F.2d 1212, 1214
`(CCPA 1981) (“The proper basis for rejection of a claim amended to recite
`elements thought to be without support in the original disclosure, therefore,
`is § 112, first paragraph . . . .”).
`Thus, the Board requires that a motion to amend set forth written
`description support in the originally filed disclosure of the subject patent for
`each proposed substitute claim, and also set forth the support in an earlier-
`filed disclosure for each claim for which benefit of the filing date of the
`earlier filed disclosure is sought. See 37 C.F.R. §§ 42.121(b)(1),
`42.121(b)(2). If a petitioner, in an opposition to a motion to amend, raises
`an issue of priority of a proposed substitute claim, for example, based on art
`identified in the opposition, the patent owner may respond in a reply to the
`opposition.
`
`7
`
`
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`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`Importantly, to meet this requirement, citation should be made to the
`original disclosure of the application, as filed, rather than to the patent as
`issued. The motion to amend itself, not the claim listing (discussed below),
`must set forth the written description support. See MLB Advanced Media,
`L.P. v. Front Row Techs., LLC, Case IPR2017-01127, slip op. at 2˗4 (PTAB
`Jan. 16, 2018) (Paper 24). In addition, the motion must set forth written
`description support for each proposed substitute claim as a whole, 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.
`
`6. Claim Listing
`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 a patent owner intends as depending from a proposed
`substitute independent claim. For each proposed substitute claim, the
`motion must show clearly the changes in the proposed substitute claim with
`respect to the original patent claim that 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.
`The claim listing may be filed as an appendix to the motion to amend,
`and shall not count toward the page limit for the motion. The appendix,
`however, shall not contain any substantive briefing. All arguments and
`evidence in support of the motion to amend shall be in the motion itself.
`
`8
`
`
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`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`7. Default Page Limits
`The page limits set forth in the rules apply. A motion to amend, as
`well as any opposition to the motion, is limited to twenty-five pages. See
`37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3). A patent owner’s reply is limited to
`twelve pages. See 37 C.F.R. § 42.24(c)(3). The parties may contact the
`Board to request additional pages or briefing.
`A petitioner may submit additional testimony and evidence with an
`opposition to the motion to amend, and a patent owner may do likewise with
`a reply. Deadlines to submit any motion to amend, opposition, reply, or
`additional briefing may be stipulated by the parties, to the extent permitted
`by the instructions set forth in the Scheduling Order.
`
`8. Duty of Candor
`Under 37 C.F.R. § 42.11, all parties have a duty of candor, which
`includes a patent owner’s duty to disclose to the Board information of which
`the patent owner is aware that is material to the patentability of substitute
`claims, if such information is not already of record in the case. When
`considering the duty of candor in connection with a proposed amendment, a
`patent owner should consider each added limitation. Information about an
`added limitation may be material even if it does not include the rest of the
`claim limitations.
`Likewise, a petitioner should keep in mind that it has a duty of candor
`in relation to relevant information that is inconsistent with a position
`advanced by the petitioner during the proceeding. Cf. 37 C.F.R.
`§ 42.51(b)(iii). For example, such information could include objective
`
`9
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`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`evidence of non-obviousness of proposed substitute claims, if a petitioner is
`aware of such evidence and it is not already of record in the case.
`
`9. Other General Information
`Additional information concerning motions to amend is published in
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67
`(Aug. 14, 2012).
`
`
`
`
`FOR PETITIONER:
`
`Brian Buroker
`Blair A. Silver
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`FOR PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`10
`
`
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