`
` Paper 54
`Entered: October 17, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC., DELL INC., SONY CORPORATION OF AMERICA,
`and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-000711
`Patent 6,218,930
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and GLENN J. PERRY,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`A conference call in the above proceeding was held on October 15,
`2013 among respective counsel for Petitioners and Patent Owner, and Judges
`
`
`1 Cases IPR2013-00385 and IPR2013-00495 have been joined with this
`proceeding.
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Arbes and Perry.2 The call was requested by Patent Owner to seek
`authorization to file a second motion to amend. Patent Owner’s first motion
`to amend (Paper 43) was filed on August 7, 2013.
`Patent Owner stated that its second motion to amend would make one
`change to its proposed substitute claim 10, in particular changing the added
`limitation “determining whether the access device is capable of accepting
`remote power based on the sensed voltage” to “determining whether the
`access device is capable of accepting remote power based on the sensed
`voltage level.” Patent Owner stated that during the deposition of Patent
`Owner’s declarant, Dr. James Knox, counsel for Petitioners appeared to take
`issue with the original “sensed voltage” language as lacking proper
`antecedent basis. Therefore, while Patent Owner does not believe any
`change is necessary for the proposed substitute claim to have proper
`antecedent basis, Patent Owner’s revised language would eliminate the
`potential issue. Patent Owner argued that good cause exists for a second
`motion to amend because Patent Owner took immediate steps to rectify the
`issue following the deposition and Petitioners would not be prejudiced by
`the minor change. Patent Owner also cited the Board’s decision in Case
`CBM2013-00005, Paper 44, as supporting its position.
`Avaya opposed Patent Owner’s request, arguing that the Board’s rules
`provide for only a single motion to amend and Patent Owner has not shown
`good cause for an additional motion. According to Avaya, there is a
`substantive difference between “sensed voltage” and “sensed voltage level”
`
`
`2 A court reporter was present on the call. Petitioner Avaya Inc. (“Avaya”)
`shall file the transcript of the call in due course as an exhibit in this
`proceeding.
`
`
`
`2
`
`
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`such that the change is not merely correcting a typographical error. Avaya
`further argued that it would be prejudiced substantially if the Board were to
`grant Patent Owner’s request because Avaya’s opposition to the motion to
`amend is due on October 22, 2013, and permitting a second motion would
`delay the proceeding. After hearing from the parties, the Board took the
`matter under advisement.
`A patent owner in an inter partes review is permitted one motion to
`amend. 37 C.F.R. § 42.121(a). An additional motion to amend may be
`authorized by the Board, but only when “there is a good cause showing or a
`joint request of the petitioner and the patent owner to materially advance a
`settlement.” 37 C.F.R. § 42.121(c). Factors that the Board considers in
`determining whether to authorize an additional motion to amend include
`“whether a petitioner has submitted supplemental information after the time
`period set for filing a motion to amend,” “the time remaining for the trial,
`the degree to which the additional evidence impacts the patentability of the
`claims being sought to be amended, and whether the additional evidence was
`known to the patent owner before the time period [for filing the motion to
`amend].” Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
`(Aug. 14, 2012).
`Under the circumstances, we are not persuaded that good cause exists
`for a second motion to amend. No supplemental information or new
`evidence was submitted by Avaya after Patent Owner filed its motion to
`amend. Rather, Patent Owner’s request appears to be based solely on the
`questions posed to Dr. Knox during his deposition. Permitting Patent Owner
`an additional motion to amend also would require delaying the remainder of
`the trial schedule, including the upcoming October 22, 2013 due date for
`
`
`
`
`3
`
`
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Avaya’s opposition. See Paper 51 (Revised Scheduling Order). It also
`would require a second deposition of Dr. Knox, who testified regarding the
`language in Patent Owner’s original motion to amend, not the proposed
`revised language.
`Further, at least according to Avaya, there is a substantive difference
`between “sensed voltage” and “sensed voltage level.” The facts in this
`proceeding, therefore, are different from those presented in Case
`CBM2013-00005, Paper 44, where the revised claim amendments merely
`corrected “typographical errors” and changed “a” to “the” to recite proper
`antecedent basis.
`Finally, Patent Owner has not articulated sufficiently why the instant
`situation is any different from the typical scenario contemplated by the rules
`where a patent owner files a motion to amend with added claim language,
`the petitioner files an opposition arguing that the new language is improper
`for some reason, and the patent owner files a reply responding to those
`arguments. The fact that Avaya takes issue with Patent Owner’s proposed
`substitute claims is not reason by itself to permit Patent Owner a second
`motion to amend. As set forth in the Scheduling Order, Patent Owner will
`have the opportunity to respond to Avaya’s arguments in its reply to
`Avaya’s opposition.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request is denied and Patent Owner is
`not authorized to file a second motion to amend.
`
`
`
`
`4
`
`
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`PETITIONERS:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`JSanok@Crowell.com
`JLindsay@Crowell.com
`
`Michael J. Scheer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`mscheer@winston.com
`tdunham@winston.com
`
`Lionel M. Lavenue
`Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`
`
`Robert J. Walters
`Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`rwalters@mwe.com
`chawkins@mwe.com
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL, & ROONEY P.C.
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
`
`
`
`
`5
`
`
`
`
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