Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 28
`Entered: December 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISPERSIVE NETWORKS, INC.,
`Petitioner
`
`v.
`
`NICIRA, INC.,
`Patent Owner
`____________
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`35 U.S.C. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 28
`Entered: December 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISPERSIVE NETWORKS, INC.,
`Petitioner
`
`v.
`
`NICIRA, INC.,
`Patent Owner
`____________
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`35 U.S.C. § 42.5
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`I. INTRODUCTION
`
` Background
`Dispersive Networks, Inc.1 (“Petitioner”) filed a Petition (Paper 1
`(“Pet.”)) requesting a post-grant review of claims 1–11 of U.S. Patent No.
`9,722,815 (Ex. 1001 (hereinafter “’815 Patent”)) (35 U.S.C. § 321). Nicira,
`Inc.2 (“Patent Owner”) timely filed a Preliminary Response (Paper 17
`(“Prelim. Resp.”)) to the Petition. An Institution of Post-Grant Review was
`decided on November 15, 2018 (Paper 25).
`A conference call was held on December 7, 2018 between the parties
`and Judges Stephens, Baer, and Jivani. Patent Owner requested the
`conference call to comply with 37 C.F.R. § 42.121 (a) prior to filing a
`motion to amend claims. The parties additionally wanted to discuss a
`proposed altering of the schedule dates set forth in the Scheduling Order
`(Paper 26) to accommodate multiple motions to amend claims. For the
`parties’ convenience, we summarize the parties’ representations and our
`guidance provided during the call. Additional guidance may be found in the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–48,767
`(Aug. 14, 2012).
`As a preliminary matter, we advised the parties to periodically check
`the United States Patent and Trademark Office’s official website, uspto.gov,
`for up-to-date information regarding our operational status in the event of a
`government shutdown.
`
`
`1 Dispersive Networks, Inc. identifies Dispersive Technologies, Inc. as an
`additional real party in interest (Paper 11, 3).
`2 Nicira, Inc. identifies VMware, Inc. as an additional real party in interest
`(Paper 5, 3).
`
`
`
`2
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
` Request for Authorization to File Motion to Amend
`We informed the parties that a memorandum detailing our guidance
`on motions to amend is available on the uspto.gov website and is titled:
`“Guidance on Motions to Amend in view of Aqua Products,” dated Nov. 21,
`2017 (discussing Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
`2017). Counsel for each party indicated familiarity with our guidance
`memorandum. As stated therein:
`[T]he Board will not place the burden of persuasion on a patent owner
`with respect to the patentability of substitute claims presented in a
`motion to amend. Rather [if a motion to amend] . . . meets the
`requirements of 35 U.S.C. § 316(d) . . ., the Board will proceed to
`determine whether the substitute claims are unpatentable by a
`preponderance of the evidence based on the entirety of the record,
`including any opposition made by the petitioner
`(id. at 2).
`Patent Owner indicated during the conference that it wishes to
`bring conditional amendments to independent claims 1 and 8, and to
`dependent claim 6; however, no specific proposed amendments were
`discussed. We granted Patent Owner’s request to file a Motion to
`Amend.
`A motion to amend claims may only cancel claims or propose a
`reasonable number of 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, but we will treat a request for consideration of
`substitute claims as contingent. That means a proposed substitute
`claim will be considered only if the original patent claim it is meant to
`replace is determined unpatentable. Here, Patent Owner requested a
`
`
`
`
` 3
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`contingent motion to cancel the claims and requested a consideration
`of substitute claims as contingent.
`With regard to the statutory requirements of 35 U.S.C. § 316(d), we
`reminded Patent Owner that it may only propose a reasonable number of
`substitute claims for each challenged claim (35 U.S.C. § 316(d)(1)(B)).
`Patent Owner indicated that it intends to propose one substitute claim for
`each of claims 1, 6, and 8, which is a presumptively reasonable number of
`substitute claims (37 C.F.R. § 42.121(a)(3) (“A reasonable number of
`substitute claims. 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.”)). To the extent Patent
`Owner seeks to propose more than one substitute claim for each cancelled
`claim, Patent Owner shall explain in the motion to amend the need for the
`additional claims and why the number of proposed amended claims is
`reasonable (35 U.S.C. § 316(d)(1)(B); 37 C.F.R. § 42.121(a)(3)).
`In our conference call, we stated the requirement of 35 U.S.C.
`§ 316(d)(3) that proposed amendments may not enlarge the scope of the
`claims of the patent or introduce new matter (see 35 U.S.C. § 316(d)(3)).
`We further specified Patent Owner must show written description support in
`the original specification for each proposed substitute claim (see 37 C.F.R.
`§ 42.121(b)) and citation should be made to the original disclosure of the
`application, as filed, rather than to the patent as issued. We reminded Patent
`Owner that it 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
`
`
`
`
` 4
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`amendment to the dependent claims is in the identification of the claim from
`which it depends.
`Our rules require a claim listing reproducing each proposed substitute
`claim (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 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. The required claim listing
`may be contained in an appendix, which does not count toward the page
`limit for the motion (see 37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3), (c)(3);
`37 C.F.R. § 42.121(b) (limiting a motion to amend and an opposition to
`twenty-five pages and a reply to twelve pages)).
`We further reminded the parties that a “motion to amend may be
`denied where . . . [t]he amendment does not respond to a ground of
`unpatentability involved in the trial” (37 C.F.R. § 42.121(a)(2)(i)). As we
`stated, there is no specific format for complying with this rule. In
`considering the motion, we will consider the entirety of the record to
`determine whether Patent Owner’s amendments respond to the single ground
`of unpatentability involved in this trial.
`
` Request to Modify Scheduling Order
`During the conference call, Patent Owner requested that we modify
`the Scheduling Order (Paper 26) in this proceeding to permit time for a
`
`
`
` 5
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`second Motion to Amend. Patent Owner additionally requested that we
`modify the procedure of this proceeding to adopt the procedures set forth in
`the Board’s Proposed Pilot Program (see Request for Comments on Motion
`To Amend Practice and Procedures in Trial Proceedings Under the America
`Invents Act Before the Patent Trial and Appeal Board, 83 Fed. Reg. 209
`(October 29, 2018)). Petitioner opposes modifying the procedure of this
`proceeding to adopt the procedures set forth in the Board’s Proposed Pilot
`Program. Petitioner further asserts that compressing the schedule for a
`possible second Motion to Amend is premature and thus, opposes
`compressing the schedule; however, Petitioner did assert it would agree to
`compressing the schedule if Patent Owner’s Motion to Amend were filed as
`non-conditional.
`During the call, we determined from the parties’ arguments that they
`failed to meet and confer meaningfully on these issues in advance of the call.
`In particular, we discerned in the parties arguments areas of potential
`agreement. In light thereof, we informed the parties of our determination
`that altering the case schedule at this juncture is unwarranted and we
`declined making any changes to the Scheduling Order (Paper 26). We
`directed the parties to meet and confer on these issues and reminded the
`parties they are free to modify the Due Dates in the Scheduling Order
`(Paper 26) as permitted:
`The parties may stipulate to different dates for DUE DATES 1
`through 5 (earlier or later, but no later than DUE DATE 6).
`Stipulating to a different DUE DATE 4 does not modify the deadline,
`set in this Order, for requesting an oral argument. A notice of the
`stipulation, specifically identifying the changed due dates, must be
`filed promptly. The parties may not stipulate to an extension of DUE
`DATES 6 and 7.
`
`
`
`
` 6
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`II. ORDER
`In consideration of the foregoing, it is:
`ORDERED that Patent Owner has satisfied the requirement of
`conferring with us prior to filing a motion to amend under 37 C.F.R.
`§ 42.121(a); and
`ORDERED that the dates in the Scheduling Order (Paper 26) are not
`modified by the Board.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 7
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`For PETITIONER:
`
`Chad Tillman
`Jeremy Doerre
`TILLMAN, WRIGHT & WOLGIN
`chad@ti-law.com
`jdoerre@ti-law.com
`
`For PATENT OWNER:
`
`Scott Cummings
`Kevin Greenleaf
`DENTONS US LLP
`scott.cummings@dentons.com
`kevin.greenleaf@dentons.com
`
`
`
`
`
`
` 8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
