Trials@uspto.gov Paper No. 10 Paper No. 19
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`571-272-7822
`Date Entered: February 2, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE JEWELRY CHANNEL, INC. USA d/b/a Liquidation Channel,
`Petitioner,
`
`v.
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`AMERICA’S COLLECTIBLES NETWORK, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00119
`Patent 8,370,211 B2
`____________
`
`
`
`
`Before LINDA M. GAUDETTE, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`
`
`McNAMARA, Administrative Patent Judge.
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`
`SUMMARY OF CONFERNCE CONERNING PROPOSED MOTION TO
`AMEND
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`

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`Case CBM2014-00119
`Patent 8,370,211 B2
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`On January 28, 2015, America’s Collectibles Network, Inc., (“Patent
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`Owner”) requested a conference concerning a possible a motion to amend US Pat
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`No. 8,370,211 B2, which is the subject of this proceeding. On January 29, 2015,
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`the Board conducted a conference with the parties to discuss the requirements for a
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`motion to amend. Neil Jones participated in the conference on behalf of Patent
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`Owner, and Jeffrey Ginsburg participated in the conference on behalf of The
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`Jewelry Channel, Inc. USA d/b/a Liquidation Channel (“Petitioner”). Judges
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`Gaudette, McNamara, and McKone also participated. During the conference, the
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`following matters were discussed.
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`A motion to amend the patent in a covered business method patent review is
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`not itself an amendment. Unlike an amendment in patent prosecution, amendments
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`proposed by a motion to amend are not entered as a matter of right. In a covered
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`business method patent review a patent owner may cancel a challenged claim or
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`propose a reasonable number of substitute claims. 35 U.S.C. § 326(d), 37 C.F.R.
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`§ 42.221(a)(3). There is no provision for amending an existing claim.
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`The applicable presumption is that only one substitute claim would be
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`needed to replace each challenged claim, although the presumption may be
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`rebutted by a demonstration of need. Id. Absent special circumstances, a
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`challenged claim can be replaced by only one claim, and a motion to amend should
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`identify specifically, for each proposed substitute claim, the challenged claim that
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`it is intended to replace. See, ZTE Corp. v. ContentGuard Holdings, IPR2013-
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`00136, Paper 33 (Nov. 7, 2013). A proposed claim should be traceable to an
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`original, challenged claim as a proposed substitute claim for the challenged claim.
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` A desire to obtain a new set of claims having a hierarchy of different scope
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`typically would not constitute sufficient special circumstances because an inter
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`partes review is an adjudicatory proceeding, rather than an examination.
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`Case CBM2014-00119
`Patent 8,370,211 B2
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`See Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). Replacing
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`a claim with a substitute claim does not change claims which depend from the
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`claim that is the subject of the substitution. For example, if the movant proposes a
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`substitute for claim 1, those claims which depend from claim 1 continue to depend
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`from claim 1 as originally written. They do not incorporate the language of the
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`substitute claim. If Patent Owner desires to remodel its claim structure according
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`to a different strategy, it may consider pursuing another type of proceeding before
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`the Office.
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`A motion to amend may be denied where (i) the amendment does not
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`respond to a ground of unpatentability involved in the trial or (ii) the amendment
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`seeks to enlarge the scope of the claims of the patent or introduce new subject
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`matter. See 37 C.F.R. § 42.121(a)(2). Thus, a substitute claim cannot be broader
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`than the broadest original patent claim and cannot remove a limitation from its
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`corresponding original claim. Such a claim would not be responsive to the
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`grounds of alleged unpatentability. These conditions are evaluated for each
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`substitute claim traceable to a challenged claim that the substitute claim is intended
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`to replace. A proper substitute claim under 37 C.F.R. § 42.121(a)(2) must narrow
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`only the scope of the challenged claim it replaces and may not enlarge the scope of
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`the challenged claim by eliminating any feature or limitation. A proposed
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`substitute claim is not responsive to an alleged ground of unpatentability if it does
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`not either include or narrow each feature or limitation of the challenged claim
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`being replaced. See Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027,
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`Paper No. 26 (June 11, 2013), Paper No. 66 (Jan. 7, 2014).
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`Unlike patent prosecution, in an inter partes review a proposed amendment
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`to the claims is not authorized unless the movant has shown that the proposed
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`substitute claims are patentable. Failure to address all issues pertinent to
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`Case CBM2014-00119
`Patent 8,370,211 B2
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`patentability would render the motion to amend incomplete. It is insufficient for
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`the movant simply to explain why the proposed substitute claims are patentable in
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`consideration of the challenges on which the Board instituted review.
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`In all circumstances, Patent Owner must make a showing of patentable
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`distinction over the prior art. This requirement applies, even in this proceeding,
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`where the sole challenge being tried is that claims 1–39 do not recite patentable
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`subject matter under 35 U.S.C. § 101. Patent Owner should identify specifically
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`the feature(s) or limitation(s) added to each substitute claim, as compared to the
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`challenged claim it replaces, and come forward with technical facts and reasoning,
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`including the construction of new claim terms, sufficient to persuade the Board that
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`the proposed substitute claim is patentable over the prior art of record, and over
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`prior art not of record, but known to Patent Owner. The burden is not on Petitioner
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`to show unpatentability, but on the Patent Owner, as the moving party, to show
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`patentable distinction over the prior art of record and other prior art known to
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`Patent Owner. See 37 C.F.R. § 42.20(c). A showing of patentable distinction may
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`rely on the declaration testimony of a technical expert about the level of ordinary
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`skill in the art and about the significance and usefulness of feature(s) or
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`limitation(s) added by the proposed claim. See Idle Free Systems, Paper No. 26.
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`A mere conclusory statement by counsel in the motion to amend that one or
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`more features or limitations are not described in any prior art or would not have
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`been suggested or rendered obvious by the prior art is facially inadequate. See id.
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`In explaining why it believes the claimed subject matter is patentable, the movant
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`must address prior art issues meaningfully. Although the choice of how to
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`approach the discussion of patentability of the substitute claims is one for the
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`movant, a narrative form may be useful. The movant should discuss the level of
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`ordinary skill in the art, explaining the basic knowledge and skill set already
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`Patent 8,370,211 B2
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`possessed by one of ordinary skill in the art, especially with respect to the
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`particular feature(s) or limitation(s) that the movant has added to the original
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`patent claims. The movant should identify in what context the added feature or
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`limitation, or something close to it, was already known, albeit not in the specific
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`combination recited in the claims at issue. See id.
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`A motion to amend claims must clearly identify the written description
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`support for the proposed substitute claims. The written description test is whether
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`the original disclosure of the application relied upon reasonably conveys to a
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`person of ordinary skill in the art that the inventor had possession of the claimed
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`subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598
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`F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Pursuant to 37 C.F.R. § 42.121(b)(1),
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`Patent Owner must set forth the support in the original disclosure of the patent for
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`each proposed substitute claim, i.e., Patent Owner must identify clearly the written
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`description support in the disclosure corresponding to the earliest date upon which
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`Patent Owner seeks to rely.
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`Merely indicating where each claim limitation individually is described in
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`the original disclosure may be insufficient to demonstrate support for the claimed
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`subject matter as a whole. While the proposed substitute claims need not be
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`described verbatim in the original disclosure in order to satisfy the written
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`description requirement, if the claim language does not appear in the same words
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`in the original disclosure, a mere citation to the original disclosure, without any
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`explanation as to why a person of ordinary skill in the art would have recognized
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`that the inventor possessed the claimed subject matter as a whole, may be
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`inadequate. See Nichia Corporation v. Emcore Corporation, IPR2012-00005,
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`Paper No. 27 (June 3, 2013).
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`Case CBM2014-00119
`Patent 8,370,211 B2
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`Argument on the proposed motion to amend is limited to 15 pages. The
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`proposed substitute claims may be presented in an Appendix. In preparing its
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`motion to amend, the Board recommends that Patent Owner review the guidance
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`provided by the Board in the proceedings cited in this paper. The parties should
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`request a conference if any further questions need to be addressed.
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`
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`PETITIONER
`
`
`Jeffrey Ginsberg
`Michael Turner
`KENYON & KENYON LLP
`jginsberg@kenyon.com
`mturner@kenyon.com
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`PATENT OWNER
`
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`Neil C. Jones
`NELSON MULLINS RILEY & SCARBOROUGH, LLP
`neil.jones@nelsonmullins.com
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