Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 21
`Entered: June 25, 2013
`
`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 (SCM)
`Patent 5,632,545
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 21
`Entered: June 25, 2013
`
`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 (SCM)
`Patent 5,632,545
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`
`A conference call was held on June 13, 2013 with counsel for the
`respective parties and a panel of administrative patent judges. The purpose
`of the conference call was for Intellectual Ventures I, LLC (IV) to seek
`guidance regarding a motion to amend. The Board entered an order into the
`record memorializing the conference call. Paper 19; “Order.” IV seeks
`rehearing of the Order. Paper 20.1
`
`
`Analysis
` IV requests “that the Board grant rehearing and clarify that a new
`claim of patent owner’s first alternative” of a set of proposed claims “is
`authorized and not procedurally barred.” Paper 20. The Order is a
`memorialization of a discussion which transpired during the conference call
`and does not include a decision or ruling made by the Board that a proposed
`claim, discussed during the call, would be procedurally barred. Indeed, the
`Board specifically avoided making any such ruling. The Order provides
`that:
`
` Various hypothetical proposed substitute claims were
`discussed. The Board discussed such hypothetical proposed
`substitute claims as best it could without providing an advisory
`opinion on whether a motion to amend with the certain
`proposed hypothetical claims would be granted. Providing such
`an advisory opinion at this juncture would be premature and
`possibly could prejudice Xilinx.
`Order at 3.
`
`
`1 The parties are reminded of the general format requirements set forth in 37
`C.F.R. § 42.6(a). The text of IV’s rehearing request appears to be smaller
`than 14-point.
`
`
`
`2
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`
`IV appears to recognize that no such decision was made, but suggests
`that the Board made a ruling or decision during the call that was not
`included per the Order. Specifically, IV recalls that the Board ruled that a
`certain hypothetical proposed claim would not be “procedurally acceptable.”
`Paper 20 at 2.
`The Board does not recall making an oral ruling or decision. The
`Board’s recollection is consistent with the Order which also makes no such
`ruling or decision. Since there was no “decision” made by the Board2 that a
`proposed hypothetical claim would be “procedurally barred,” there is
`nothing for us to reconsider and therefore IV’s request for rehearing is
`dismissed.
`
`The Board, however, exercises its discretion to provide the following
`guidance regarding “a new claim of patent owner’s first alternative” and
`whether such claim would be “procedurally barred.” Paper 20 at 4.
`IV proposes, per its hypothetical first alternative, canceling dependent
`claim 3 and adding a new claim 4 that would depend from original claim 2.
`Paper 20 at 1. The new claim 4 would include “three limitations but not the
`limitations of [original] claim 3.” Id. As we did during the conference call,
`the Board directs attention to IPR2012-00027, Paper 26 at 5-6, which
`provides the following:
`Specifically, with regard to 37 C.F.R. § 42.121(a)2)(i), a
`proposed substitute claim is not responsive to an alleged ground
`of unpatentability of a challenged claim if it does not either
`include or narrow each feature of the challenged claim being
`replaced. A patent owner may not seek to broaden a challenged
`claim in any respect, in the name of responding to an alleged
`
`2 A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. 37 C.F.R. § 42.71(d).
`
`
`
`3
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`
`ground of unpatentability. A proper substitute claim under 37
`C.F.R. § 42.12(a)(2)(i) must only narrow the scope of the
`challenged claim it replaces. Similarly, under 37 C.F.R. §
`42.121(a)2)(ii), a substitute claim may not enlarge the scope of
`the challenged claim it replaces by eliminating any feature.
`IPR2013-00027, Paper 26 at 5-6 (emphasis added).
`Based on the above paragraph of the IPR2013-00027 decision, and
`with regard to rule 37 C.F.R. § 42.121(a)(2)(i), a patent owner may not
`broaden a challenged claim in any respect, for example by eliminating any
`feature.
`However, as also provided for in the IPR2013-00027 decision, an
`amendment that appears to be beyond what is contemplated by rule 37
`C.F.R. § 42.121(a)(2)(i), would not be “procedurally barred” per se provided
`that the patent owner shows that such an amendment is justified by special
`circumstances. Id.
`For the above reasons, it is
`ORDERED that IV’s Request for Rehearing is dismissed.
`
`
`
`4
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`PETITIONER:
`
`David L. McCombs
`Thomas B. King
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`david.mccombs@haynesboone.com
`thomas.king@haynesboone.com
`
`PATENT OWNER:
`
`George E. Quillin
`Paul S. Hunter
`FOLEY & LARDNER LLP
`3000 K Street, N.W., Suite 600
`Washington, DC 20007-5109
`gquillin@foley.com
`phunter@foley.com
`
`
`
`5
`
`
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
