Trials@uspto.gov
`571-272-7822
`
` Paper: 12
` Entered: April 20, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTERDIGITAL TECHNOLOGY CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01413
`Patent 8,199,726 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Information and Guidance on Patent Owner Proposed Motion to Amend
`37 C.F.R. § 42.5(a)
`
`
`
`
`
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`
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`571-272-7822
`
` Paper: 12
` Entered: April 20, 2021
`
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`
`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTERDIGITAL TECHNOLOGY CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01413
`Patent 8,199,726 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Information and Guidance on Patent Owner Proposed Motion to Amend
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`
`In an April 15, 2021 email to the Board, Patent Owner indicated that it
`seeks to file a motion to amend in the above-referenced proceeding, and
`requested a conference call to satisfy the requirement set forth in 37 C.F.R.
`§ 42.121(a). Based on the facts of this proceeding, we determine that a
`conference call is not necessary, and the conference requirement is deemed
`satisfied. In this Order, we set forth general guidance for motions to amend
`and specific guidance for the Board’s Motion to Amend Pilot Program.
`General Guidance for Motions to Amend
`The requirements for a motion to amend are set forth in 37 C.F.R.
`§ 42.121. Although Patent Owner does not bear the burden of persuasion to
`demonstrate patentability of the proposed substitute claims,1 a motion to
`amend must still comply with several statutory and regulatory requirements,
`as discussed in Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper
`15 (PTAB Feb. 25, 2019) (precedential), Amazon.com Inc. v. Uniloc
`Luxembourg S.A., IPR2017-00948, Paper 34 (PTAB Jan. 18, 2019)
`(precedential), and the Office’s November 2019 Consolidated Trial Practice
`Guide.2
`A claim listing, reproducing each proposed substitute claim, is
`required. 37 C.F.R. § 42.121(b). 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. Id. §§ 42.24(a)(1), 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
`
`
`1 See Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Bosch
`Automotive Services Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir.
`2017).
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`IPR2020-01413
`Patent 8,199,726 B2
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`any dependent claim that Patent Owner intends to depend from a proposed
`substitute independent claim. For each proposed substitute claim, the
`motion to amend should identify specifically the original claim that it is
`intended to replace and show clearly the changes of the proposed substitute
`claim with respect to the original claim.
`Additionally, Patent Owner must show sufficient written description
`support in the original specification for each proposed substitute claim.
`37 C.F.R. §47.121(b)(1). Citation should be made to the original disclosure
`of the application as filed, rather than to the patent as issued. Patent Owner
`must also show sufficient 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 claim is in the identification of the claim from
`which it depends. The written description support must be set forth in the
`motion to amend itself, not in the claim listing.
`As set forth in 37 C.F.R. § 42.24, Patent Owner’s motion to amend
`and Petitioner’s opposition are each limited to twenty-five pages. 37 C.F.R.
`§§ 42.24(a)(1)(vi), 42.24(b)(3). Patent Owner’s reply and Petitioner’s sur-
`reply are limited to twelve pages. Id. § 42.24(c)(3).
`Specific Guidance for the Motion to Amend Pilot Program
`The Board’s pilot program for motion to amend practice and
`procedure in AIA trial proceedings became effective on March 15, 2019.
`Practices and procedures for the pilot program are set forth in the Notice
`Regarding a New Pilot Program Concerning Motion to Amend Practice and
`Procedures in Trial Proceedings under the America Invents Act before the
`Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019)
`(“Notice”). The pilot program applies to all AIA trial proceedings instituted
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`3
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`IPR2020-01413
`Patent 8,199,726 B2
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`on or after the March 15, 2019 effective date. Because this proceeding was
`instituted on February 5, 2021, the pilot program is applicable to a motion to
`amend filed in this proceeding. Even so, Patent Owner has the opportunity
`to proceed with a motion to amend “in effectively the same way as current
`practice by not electing to either receive preliminary guidance [from the
`Board on a first motion to amend] or to file a revised [motion to amend].”
`Id. at 9497, 9499.
`Under the pilot program, receiving preliminary guidance on a motion
`to amend is not automatic. Importantly, if Patent Owner seeks preliminary
`guidance from the Board on a motion to amend, an explicit request for
`preliminary guidance must be included in the first motion to amend filed
`no later than DUE DATE 1. If Patent Owner requests preliminary guidance
`in its first motion to amend, the Board will respond to Patent Owner’s
`request by issuing preliminary, non-binding guidance to the parties on Patent
`Owner’s first motion to amend. Such guidance will be provided
`approximately four weeks after Petitioner files an opposition to the motion
`to amend (or after the due date for the opposition (DUE DATE 2), if none is
`filed). Information regarding such guidance is set forth in the Notice.
`Patent Owner has several options for addressing the Board’s
`preliminary guidance and/or Petitioner’s opposition, including filing a
`revised motion to amend on DUE DATE 3. Id. at 9,499–9,502. A revised
`motion to amend would be in lieu of a reply to Petitioner’s opposition to the
`motion to amend, and in place of the first motion to amend. See L&P
`Property Management Co. v. Remacro Machinery and Technology
`(Wujiang) Co., Ltd., IPR2019-00255, Paper 15 at 12–14 (PTAB June 18,
`2019) (Section IV.3, providing information about Patent Owner’s options
`under the pilot program). Further instructions and guidance for a revised
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`4
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`IPR2020-01413
`Patent 8,199,726 B2
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`motion to amend under the pilot program are set forth in the Notice. A
`request for preliminary guidance is not a prerequisite for filing a revised
`motion to amend, and Patent Owner may file a revised motion regardless of
`whether it requests preliminary guidance. Notice, 9501. Should Patent
`Owner file a revised motion to amend, the Board will issue a revised
`Scheduling Order to allow additional briefing relating to the revised motion
`to amend. Id.
`The parties may not stipulate to a different due date for DUE DATE 2
`related to Petitioner’s opposition to the motion to amend, or for DUE DATE
`3 related to Patent Owner’s reply to the opposition to the motion to amend
`(or Patent Owner’s revised motion to amend), without prior authorization
`from the Board. See Papers 9, 7.
`The parties should contact the Board in the event that they have any
`questions about the motion to amend process or require further guidance.
`In consideration of the foregoing, it is hereby
`ORDERED that the conference requirement under 37 C.F.R.
`§ 42.121(a) has been satisfied.
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`5
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`IPR2020-01413
`Patent 8,199,726 B2
`
`PETITIONER:
`
`Joseph Micallef
`jmicallef@sidley.com
`
`Scott Border
`sborder@sidley.com
`
`Ketan Patel
`kpatel@sidley.com
`
`
`
`PATENT OWNER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Matthew A. Argenti
`margenti@wsgr.com
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`6
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