`
`
`
`
`
` Paper No. ___
` Date Filed: June 24, 2013
`
`
`
`Filed on behalf of Intellectual Ventures
`By: George E. Quillin
`
`
`
`FOLEY & LARDNER LLP
`
`3000 K Street, N.W., Suite 600
`
`Washington, D.C. 20007
`
`Tel: (202) 672-5300
`
`Fax: (202) 672-5399
`
`gquillin@foley.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`XILINX, INC.
` Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`___________
`
`Case IPR2013-00029
`Patent 5,632,545
`___________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`INTELLECTUAL VENTURES REQUEST FOR REHEARING
`(of the Board’s Order of June 17, 2013)
`
`
`
`
`
`4833-4442-3188.1
`
`
`
`IPR 2013-00029
`
`Patent Owner Request for Rehearing
`
`Patent owner Intellectual Ventures I LLC requests rehearing of the Board’s order of June
`
`17, 2013 (Paper 19). Rehearing is permitted by Bd. R. 42.71(d), by the comment and response
`
`of 77 Fed. Reg. at 48624 and of 77 Fed. Reg. at 48687 (Aug. 12, 2012) (“the Board’s rehearing
`
`practice for proceedings under part 42 will be consistent with the . . . rehearing practice used in
`
`interference proceedings”), and by the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012).
`
`The order, Paper 19, resulted from a conference call among the APJs and counsel for the
`
`parties, during which counsel for patent owner sought guidance from the Board about a motion
`
`to amend the patent. What the Board wrote in its order must be understood in light of what was
`
`said during the call.
`
`Patent owner’s patent has three claims. Dependent claims 2 and 3 each depend directly
`
`from independent claim 1. Here is a graphic representation of that relationship:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1
` / \
`2 3
`
`
`
`
`
`
`
`
`During the call, patent owner proposed a motion to amend that involved canceling
`
`dependent claim 3, and adding one of two alternative dependent claims 4. See Paper 19 at 3.
`
`In the first alternative, the new claim would depend from claim 2 instead of directly from
`
`claim 1, and would add, say, three limitations but not the limitations of claim 3. Graphically:
`
` 1
` /
` 2
` |
` 4
`
`
`
`
`1
`
`
`
`IPR 2013-00029
`
`Patent Owner Request for Rehearing
`
`In the second alternative, the substitute claim would depend directly from claim 1, and
`
`would include all the limitations of claim 3 as well as the three additional limitations.
`
`Graphically:
`
` 1
`
`
`
`
`
` / \
`
`
`
`
`
`2 4'
`
`
`During the call, patent owner came to understand that the Board viewed the first
`
`alternative as not procedurally acceptable, at least because it would supposedly transgress the
`
`requirement of 35 USC § 316(d)(3) and Bd. R. 42.121(a)(2)(ii) that an amendment must not seek
`
`to enlarge “the scope of the claims of the patent.” That is, the Board’s view was a matter of
`
`policy or statutory/regulatory interpretation.
`
`Patent owner respectfully submits that the Board has misapprehended or overlooked the
`
`law on enlarging or broadening the scope of the patent claims. As patent owner pointed out
`
`during the call, the claim of the first alternative is necessarily narrower in every respect than the
`
`independent claim from which it ultimately depends. In other words, there is nothing within the
`
`scope of the new dependent claim 4 that would not have been within the scope of the originally
`
`issued independent claim 1 or dependent claim 2.
`
`In addition, patent owner submits that a Board ruling procedurally barring a claim of the
`
`first alternative runs counter to the agency’s notice and comment rulemaking expressed in the
`
`Trial Practice Guide. See, e.g., the “example of what may be included in a motion to amend.”
`
`77 Fed. Reg. at 48767. In that example, claims 2, 3, and 4 each depended directly from claim 1.
`
` 1
`
`
`
`
`
` / | \
`
`
`
`
`
`2 3 4
`
`
`
`2
`
`
`
`IPR 2013-00029
`
`Patent Owner Request for Rehearing
`
`All four original claims were cancelled. Claim 5 combined the limitations of and
`
`replaced claims 1-3, and claim 6 replaced claim 4. Dependent claim 7, however, did not
`
`substitute or replace any previous claim. Rather, it was “a proposed new claim reciting newly
`
`claimed subject matter.” Id. Claim 7 was properly dependent and did not enlarge the scope of
`
`the patent claims.
`
` 5
`
`
`
`
`
` / \
`
`
`
`
`
`7 6
`
`That not-enlarging property of new claim 7 would not change had the patent owner in
`
`that example simply refrained from adding a claim to substitute for cancelled claim 4. In other
`
`words, new claim 7 did not include and did not need to include the volume limitation of original
`
`dependent claim 4.
`
`So too here; patent owner respectfully submits that its first alternative claim is properly
`
`dependent and does not enlarge the scope of the patent claims. Just as new claim 7 in the Federal
`
`Register’s example was permissible, so too patent owner’s first alternative claim here ought to be
`
`permissible.
`
`The Board’s order did not expressly bar patent owner from presenting a claim of its first
`
`alternative, but neither did the order expressly authorize patent owner to file it or grant patent
`
`owner’s request for guidance during the call that such a claim would be permissible. To be clear,
`
`patent owner does not seek “an advisory opinion on whether a motion to amend with the certain
`
`proposed hypothetical claims would be granted.” (Paper 19 at 4, emphasis added) Patent
`
`owner recognizes that the Board is not in a position to opine on the substantive merits of a
`
`motion it has not seen. So patent owner is not seeking a ruling now on whether its motion to
`
`amend would actually be granted on the merits. Rather, patent owner merely seeks a ruling that
`
`
`
`3
`
`
`
`IPR 2013-00029
`
`Patent Owner Request for Rehearing
`
`a motion to amend presenting a claim of its first alternative would not for that reason be
`
`dismissed or denied.
`
`Consequently, patent owner respectfully requests that the Board grant rehearing and
`
`clarify that a new claim of patent owner’s first alternative is authorized and not procedurally
`
`
`
`
`
`barred.
`
`
`
`
`
`
`
`Date: June 24, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/George E. Quillin/_____
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
`
`
`
`4
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Intellectual Ventures
`
`Request for Rehearing is being served on counsel of record on June 24, 2013, by filing this
`
`document through the Patent Review Processing System as well as delivering a copy via
`
`commercial overnight courier directed to the counsel of record for the Petitioner at the following
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`David L. McCombs, Esq.
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/George E. Quillin/_____
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
`
`address:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: June 24, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4833-4442-3188.1
`
`
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
