Trials@uspto.gov
`571-272-7822
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` Paper 15
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`Entered: January 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARL ZEISS SMT GMBH
`Petitioner
`
`v.
`
`NIKON CORPORATION
`Patent Owner
`
`
`Case IPR2013-00362 (Patent 7,348,575 B2)
`Case IPR2013-00363 (Patent 7,348,575 B2)1
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`Case IPR2013-00362 and Case IPR2013-00363
`Patent 7,348,575 B2
`
`
`An initial conference call in the above proceeding was held on
`January 8, 2014, between respective counsel for Petitioner and Patent
`Owner, and Judges Medley, Blankenship, and Clements. The purpose of the
`call was to discuss any proposed changes to the Scheduling Order (IPR2013-
`00362, Paper 11; IPR2013-00363, Paper 8) and any motions that the parties
`intend to file. Prior to the call, Patent Owner filed a proposed motions list.
`IPR2013-00362, Paper 13; IPR2013-00363, Paper 11. The following issues
`were discussed.
`Patent Owner’s counsel requested that Due Date 1 be extended by one
`month to, inter alia, allow time to obtain evidence from its foreign client.
`Petitioner’s counsel did not oppose on the condition that Due Date 2 be
`similarly extended. Based on the facts of this case, the Board agrees that
`there is good cause for extending Due Dates 4, 5, and 6. 37 C.F.R.
`§ 42.5(c)(2). Due Date 7 remains unchanged. Attached to this Order is a
`revised Scheduling Order with new Due Dates 4, 5, and 6. The parties
`agreed to confer regarding Due Dates 1, 2, and 3, and to stipulate to new
`dates for those Due Dates (but none later than Due Date 4). A notice of the
`stipulation must be promptly filed.
`Petitioner indicated that it does not presently contemplate filing any
`motion.
`Patent Owner stated that it is contemplating filing a motion to amend.
`For further guidance regarding these requirements, the Board directed Patent
`Owner to two decisions available on the Board’s website under
`“Representative Orders, Decisions, and Notices”: (1) IPR2012-00005, Paper
`
`2
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`

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`Case IPR2013-00362 and Case IPR2013-00363
`Patent 7,348,575 B2
`
`27 (June 3, 2013); and (2) IPR2012-00027, Paper 26 (June 11, 2013). The
`Board also directed Patent Owner to IPR2013-00136, Paper 33 (Nov. 7,
`2013) and IPR2012-00027, Paper 66 (Jan. 7, 2014). As the Board explained
`recently:
`
`A motion to amend claims in an inter partes review is not
`itself an amendment. Unlike a claim amendment in patent
`prosecution, amendments proposed by a motion to amend are
`not entered as a matter of right. The applicable presumption is
`that only one substitute claim would be needed to replace each
`challenged claim, although the presumption may be rebutted by
`a demonstration of need. 37 C.F.R. § 42.121(a)(3). Absent
`special circumstances, a challenged claim can be replaced by
`only one claim, and a motion to amend should, for each
`proposed substitute claim, specifically identify the challenged
`claim that it is intended to replace. A proposed claim should be
`traceable to an original challenged claim as a proposed
`substitute claim for the challenged claim. A desire to obtain a
`new set of claims having a hierarchy of different scope typically
`would not constitute sufficient special circumstances because
`an inter partes review is an adjudicatory proceeding, rather than
`an examination. See, Abbott Labs v. Cordis Corp., 710 F.3d
`1318, 1326 (Fed. Cir. 2013). If the patent owner desires to
`remodel its claim structure according to a different strategy, it
`may consider pursuing another type of proceeding before the
`Office.
`A motion to amend may be denied where (i) the
`amendment does not respond to a ground of unpatentability
`involved in the trial or (ii) the amendment seeks to enlarge the
`scope of the claims of the patent or introduce new subject
`matter. 37 C.F.R. § 42.121(a)(2). These conditions are
`evaluated for each substitute claim traceable to a challenged
`claim that the substitute claim is intended to replace. A proper
`substitute claim under 37 C.F.R, § 42.121(a)(2) must only
`narrow the scope of the challenged claim it replaces and may
`3
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`Case IPR2013-00362 and Case IPR2013-00363
`Patent 7,348,575 B2
`
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`not enlarge the scope of the challenged claim by eliminating
`any feature or limitation. A proposed substitute claim is not
`responsive to an alleged ground of patentability if it does not
`either include or narrow each feature of the challenged claim
`being replaced. See, Idle Free Systems, Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26.
`Unlike patent application proceedings, in an inter partes
`review a proposed amendment to the claims is not authorized
`unless the movant has shown that the proposed substitute
`claims are patentable. In all circumstances the patent owner
`must make a showing of patentable distinction over the prior
`art. A patent owner should identify specifically the feature or
`features added to each substitute claim, as compared to the
`challenged claim it replaces, and come forward with technical
`facts and reasoning about those features including construction
`of new claim terms, sufficient to persuade the Board that the
`proposed substitute claim is patentable over the prior order of
`record, and over prior art not of record but known to the patent
`owner. The burden is not on the petitioner to show
`unpatentability, but on the patent owner, as the moving party, to
`show patentable distinction over the prior art of record and
`other prior art known to the patent owner. 37 C.F.R. § 42.20(c).
`A showing of patentable distinction may rely on the declaration
`testimony of a technical expert about the level of ordinary skill
`in the art and about the significance and usefulness of features
`added by the proposed claim.
`A mere conclusory statement by counsel in the motion to
`amend that one or more added features are not described in any
`prior art or would not have been suggested or rendered obvious
`by the prior art is facially inadequate. Id. It also is insufficient
`for the movant simply to explain why the proposed substitute
`claims are patentable in consideration of the challenges on
`which the Board instituted review. Limiting the discussion
`either to the references already in the proceeding, or to the
`narrow combination specifically recited in the claim, does not
`
`4
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`Case IPR2013-00362 and Case IPR2013-00363
`Patent 7,348,575 B2
`
`
`provide a meaningful analysis. See, Corning Gilbert, Inc. V.
`PPC Broadband, Inc., IPR2013-00347, Paper No. 20. In
`explaining why it believes the claimed subject matter is
`patentable, the movant must address issues of nonobviousness,
`meaningfully. The movant should discuss the level of ordinary
`skill in the art, explaining the basic knowledge and skill set
`already possessed by one of ordinary skill in the art, especially
`with respect to the particular feature or features the patent
`owner has added to the original patent claims. The movant
`should identify in what context the added feature, or something
`close to it, was already known, albeit not in the specific
`combination recited in the claims at issue. Id.
`A motion to amend claims must clearly identify the
`written description support for the proposed substitute claims.
`The written description test is whether the original disclosure of
`the application relied upon reasonably conveys to a person of
`ordinary skill in the art that the inventor had possession of the
`claimed subject matter as of the filing date. Ariad Pharms., Inc.
`v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`banc). 37 C.F.R. § 42.121(b)(1) requires the patent owner to
`set forth the support in the original disclosure of the patent for
`each proposed substitute claim i.e., the patent owner must
`clearly identify the written description support in the disclosure
`corresponding to the earliest date upon which the patent owner
`seeks to rely.
`Merely indicating where each claim limitation
`individually is described in the original disclosure may be
`insufficient to demonstrate support for the claimed subject
`matter as a whole. While the proposed substitute claims need
`not be described verbatim in the original disclosure in order to
`satisfy the written description requirement, should the claim
`language not appear in the same words in the original
`disclosure, a mere citation to the original disclosure without any
`explanation as to why a person of ordinary skill in the art would
`have recognized that the inventor possessed the claimed subject
`
`5
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`

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`Case IPR2013-00362 and Case IPR2013-00363
`Patent 7,348,575 B2
`
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`matter as a whole may be inadequate. See, Nichia Corporation
`v. Emcore Corporation, IPR2012-00005, Paper No. 27.
`IPR2013-00194, Paper 27 (January 9, 2014) at 2-5.
`Order
`
`
`
`It is
`ORDERED that Due Dates 4, 5, and 6 set in the Scheduling Order
`dated December 16, 2013 are vacated;
`FURTHER ORDERED that:
`1. Due Date 4 is reset to June 23, 2014;
`2. Due Date 5 is reset to July 7, 2014;
`3. Due Date 6 is reset to July 14, 2014; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`Motion to Amend.
`
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`6
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`

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`Case IPR2013-00362 and Case IPR2013-00363
`Patent 7,348,575 B2
`
`For PETITIONER:
`
`Marc M. Wefers, Esq.
`Chris C. Bowley, Esq.
`Lawrence Kolodney
`Fish & Richardson, P.C.
`wefers@fr.com
`bowley@fr.com
`kolodney@fr.com
`
`
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`For PATENT OWNER:
`
`John S. Kern, Esq.
`Robert C. Mattson, Esq.
`Oblon Spivak
`CPdocketKern@oblon.com
`CPdocketMattson@oblon.com
`
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`7
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