`571-272-7822
`
`
`
` Paper 20
`
` Entered: May 16, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESEARCH IN MOTION CORPORATION
`Petitioner,
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner.
`____________
`
`Case IPR2013-00016 (JYC)
`Patent 6,441,828
`____________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On May 14, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Medley, Turner, and Chang.
`While prior authorization is not required for filing a first motion to amend
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`claims that is timely filed no later than Due Date 1 set forth in the
`Scheduling Order (Paper 17), counsel for MobileMedia initiated the
`conference call to seek the Board’s guidance prior to filing its motion to
`amend claims.
`
`During the conference call, MobileMedia informed the Board that,
`rather than filing a patent owner response, it intends to file a motion to
`amend claims that will cancel all of the challenged claims (claims 6, 7, 15,
`17, and 18), and propose only one substitute claim to replace each
`challenged claim. MobileMedia also indicated that the proposed substitute
`claims will not add new matter or enlarge the scope of existing claims.
`MobileMedia further stated that, in support of its motion to amend claims, it
`intends to file an expert declaration and an English language translation of a
`foreign priority application.
`In response to MobileMedia’s inquiry, the Board explained that
`although only one challenged claim is independent, MobileMedia may
`propose more than one independent claim in certain situations, such as
`rewriting a dependent claim in independent form and then incorporating a
`new claim limitation into the new independent claim. The Board further
`clarified that the claim listing in a motion to amend claims should not list the
`non-challenged claims. The Board encouraged MobileMedia, for each
`proposed substitute claim that bears a strong resemblance to an original
`claim, to identify that original claim and show the relative changes with
`respect to the original claim, e.g., denoting text deleted by one notation such
`as bracketing and text inserted by another notation such as underlining.
`
`2
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`As explained during the conference call, any substitution must be
`made to respond to a ground of unpatentability involved in the trial. See 37
`C.F.R. § 42.121(a)(2)(i). The Board pointed out that in a motion to amend,
`MobileMedia must explain how the proposed substitute claims obviate the
`grounds of unpatentability authorized in this trial, and why they are
`patentable over the prior art of record. That explanation should include a
`claim construction of the proposed substitute claims. The Board noted that
`the original challenged claims contain several means-plus-function
`limitations. See Decision on Institution, Paper 16 at pages 7-16. Should any
`proposed substitute claim include a means-plus-function limitation under 35
`U.S.C. § 112, ¶ 61, MobileMedia must include a claim construction for each
`means-plus-function limitation identifying the corresponding structure
`disclosed in the specification that performs the claimed function, including
`any computer or microprocessor, computer program, and algorithm.
`In addition, the Board noted that for each proposed substitute claim,
`MobileMedia must also set forth the support in the original disclosure of the
`involved patent, and the support in an earlier-filed disclosure for which
`benefit of the filing date of the earlier filed disclosure is sought, including
`any foreign priority application. 37 C.F.R. § 42.121(b). Any English
`
`
`1 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’828 patent has a filing date before September 16,
`2012 (effective date), we refer to the pre-AIA version of 35 U.S.C. § 112 in
`this Order.
`
`3
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`language translation must be filed with an affidavit attesting to the accuracy
`of the translation. 37 C.F.R. § 42.63(b).
`Counsel for Research In Motion requested an extension of time for
`filing an opposition to MobileMedia’s motion to amend. The Board
`explained that because MobileMedia has not filed a motion to amend, such a
`request is premature, and also noted that the Scheduling Order (Paper 17)
`permits the parties to stipulate to different dates for Due Dates 1 through 3
`(earlier or later, but no later than Due Date 4).
`It is
`ORDERED that MobileMedia should note the above guidance in
`filing its motion to amend claims under 37 C.F.R. § 41.121; and
`FURTHER ORDERED that, at this time, no extension of time is
`authorized for filing an opposition to a motion to amend.
`
`
`PETITIONER:
`
`Robert C. Mattson
`Oblon Spivak
`CPdocketMattson@oblon.com
`
`PATENT OWNER:
`
`Anthony C. Coles
`PROSKAUER ROSE LLP
`acoles@proskauer.com
`
`
`
`4
`
`
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