`
`
` Entered: August 25, 2015
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00040
`Patent 7,774, 280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`
`I. DISCUSSION
`A conference call in this proceeding was held on August 25, 2015,
`between respective counsel for Petitioner and Patent Owner, and Judges
`Zecher, Wood, and Braden. Patent Owner, ContentGuard Holdings, Inc.
`(“ContentGuard”), requested the conference call to discuss issues regarding
`a proposed amendment that it intends to submit in a Motion to Amend.
`ContentGuard began the conference call by explaining that it intends
`to file a Patent Owner Response, along with a contingent Motion to Amend
`that effectively narrows independent claim 1. ContentGuard represented
`that it intends to amend independent claim 1 by including a definition for the
`claim term “meta-right” that it proposed in its Preliminary Response, which
`it believes is consistent with the district court’s construction of the same
`claim term. ContentGuard noted that, because there are large number of
`proceedings involving U.S. Patent No. 7,774,280 B2 and related patents, as
`well as the extensive prosecution history for these patents, the prior art
`known to ContentGuard is voluminous. ContentGuard requested guidance
`as to what prior art it should focus on in its Motion to Amend. As we
`explained during the conference call, ContentGuard should, at a minimum,
`focus on the prior art of record, which, in this case, is Stefik (Ex. 1002). As
`to the prior art known to ContentGuard, the focus should be on the prior art
`ContentGuard discerns is the most relevant to each added limitation. See
`MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. 3 (PTAB
`July 15, 2015) (Paper 42).
`We then took this opportunity to explain that, in general,
`consideration of a motion to amend is contingent on us determining that the
`claim for which the substitute claim is proposed is unpatentable. Entry of
`
`
`
`2
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`proposed amendments is not automatic, but only upon ContentGuard
`demonstrating the patentability of each proposed substitute claim. See 37
`C.F.R. § 42.20(c). This includes demonstrating that each proposed
`substitute claim is supported by the written description of the application
`upon which the substitute claims rely, addressing the patentability of each
`proposed substitute claim over the prior art of record and the prior art known
`to ContentGuard, and accounting for the basic knowledge and skill set
`possessed by a person of ordinary skill in the art even without reliance on
`any particular prior art reference. See 37 C.F.R. § 42.121(b). For further
`guidance on a motion to amend, we directed the parties to the following
`representative decisions: (1) Idle Free Systems, Inc. v. Bergstrom, Inc., Case
`IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative); (2)
`Corning Optical Commc’n RF, LLC, v. PPC Broadband, Inc., Case
`IPR2014-00441 (PTAB Oct. 20, 2014) (Paper 19); and (3) MasterImage 3D,
`Case IPR2015-00040, Paper 42.
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby ORDERED that
`ContentGuard has satisfied the conference requirement of 37 C.F.R.
`§ 42.221(a) for this proceeding.
`
`
`
`
`3
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`For PETITIONER:
`
`Robert R. Laurenzi
`Nisha Agarwal
`Kaye Scholer LLP
`robert.laurenzi@kayescholer.com
`nisha.agarwal@kayescholer.com
`
`For PATENT OWNER:
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
`
`
`
`
`
`
`
`4
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