Trials@uspto.gov
`571-272-7822
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`Paper 28
`Date: March 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TOYOTA MOTOR CORPORATION,
`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner
`____________
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`Case IPR2013-00417
`Patent 8,036,788
`____________
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`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`Order
`Conduct of Proceeding
`37 C.F.R. § 42.5
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`IPR2013-00417
`Patent 8,036,788
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`Introduction
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`On March 11, 2014, a telephone conference call was held between
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`respective counsel for the parties and Judges Lee, Parvis, and Anderson. Patent
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`owner (“AVS”) initiated the conference call to satisfy the confer requirement of
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`37 C.F.R. § 42.121(a) with regard to the filing of a motion to amend claims.
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`Counsel for each party expressed that because both parties were participants in a
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`conference call, held on March 5, 2014, in connection with related proceedings
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`IPR2013-00419, IPR2013-00420, IPR2013-00421, IPR2013-00422, and IPR2013-
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`00423, during which the Board gave detailed verbal guidance on the requirements
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`of a motion to amend claims, a similar verbal guidance during this conference call
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`would not be necessary in this case.
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`Instead, AVS had a question regarding the effects of a request for entry of
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`adverse judgment, in general, not necessarily to be filed in this proceeding.
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`Counsel for AVS indicated that AVS is contemplating such an action in at least
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`one of the following 7 proceedings, IPR2013-00412, IPR2013-00413, IPR2013-
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`00414, IPR2013-00415, IPR2013-00416, IPR2013-00417, and IPR2013-00424.
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`The Board indicated that in light of the preference of the parties, no detailed
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`guidance would be given verbally during the call, but the Board will include such
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`guidance, in written form, in the paper summarizing the conference call.
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`Discussion
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`Counsel for AVS asked what claims may still be pursued by AVS in other
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`proceedings of the USPTO, if it requests adverse judgment in this proceeding. We
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`do not advise parties on what claims to pursue, or in which proceeding to pursue
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`them. The estoppel effect of an adverse judgment on patent owner is governed by
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`37 C.F.R. § 42.73(d)(3).
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`2
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`IPR2013-00417
`Patent 8,036,788
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`The following applies to a motion to amend claims.
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`1.
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`There should be no “amending in place.” Any claim with a changed
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`scope, subsequent to the amendment, should be included in the claim listing as a
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`proposed substitute claim, and have a new claim number. That would eliminate
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`any confusion as to whether a claim depending from an amended claim depends
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`from the claim in its form prior to the amendment or subsequent to the amendment.
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`In that regard, an unchanged dependent claim, which depends from a cancelled
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`claim, still retains its same scope and does not need to be rewritten.
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`2.
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`A motion to amend claims only may cancel claims or propose
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`substitute claims. The request to cancel claims will not be regarded as contingent.
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`However, the request to substitute claims is always contingent. That means a
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`proposed substitute claim will be considered only if the original patent claim it
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`replaces is determined unpatentable or is cancelled by the patent owner.
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`3.
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`A claim listing is required by 37 C.F.R. § 42.121(b). Each proposed
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`substitute claim must be reproduced in the claim listing, and the claim listing
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`should be set forth in the motion itself, and not a claim appendix. Also, for each
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`proposed substitute claim, the motion must show, clearly, the changes of the
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`proposed substitute claim with respect to the original patent claim which it is
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`intended to replace. No particular form of showing changes is required, but use of
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`brackets to indicate deleted text and underlining to indicate inserted text is
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`suggested.
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`4.
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`There is a presumption that only one substitute claim is needed for
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`each original patent claim. But that does not mean the patent owner is in
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`compliance so long as the total number of claims before and after the amendment
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`remain the same. The requirement is viewed on a per claim basis, and the patent
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`owner may not arbitrarily designate a proposed substitute claim as being a
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`3
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`IPR2013-00417
`Patent 8,036,788
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`substitute claim for whichever original patent claim the patent owner simply
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`desires to name. The proposed substitute claim must be traceable back to the
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`original patent claim that it is intended to replace. In general, claim X is properly
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`named as a substitute claim for claim Y if claim X includes all of the features of
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`claim Y. If the patent owner needs more than one substitute claim for a particular
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`patent claim, the motion should articulate a special circumstance to justify the
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`request. If the additional proposed substitute claim is patentably distinct from the
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`first substitute claim, given the first substitute claim as prior art, that likely would
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`be sufficient justification.
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`5.
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`A proposed substitute claim should be responsive to the ground of
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`unpatentability applicable to the original patent claim for which it is a substitute.
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`37 C.F.R. § 42.121(a)(2)(i). Generally, that means the proposed substitute claim
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`should not eliminate any feature or element of the original patent claim which it is
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`intended to replace. If there is a special circumstance to justify deviation from that
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`general rule, the motion should provide adequate and persuasive explanation. A
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`proposed substitute claim also is prohibited from enlarging the scope of the patent
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`claims. 37 C.F.R. § 42.121(a)(2)(ii).
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`6.
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`The patent owner bears the burden of proof to establish that it is
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`entitled to the relief requested in the motion to amend. 37 C.F.R. § 42.20(c). If
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`the motion is granted, the proposed substitute claims will be added to the involved
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`patent, without examination. Accordingly, the patent owner must show
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`patentability over the prior art in general, and not just over the references applied
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`by the petitioner against the original patent claims.
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`Explaining patentability over references applied by the petitioner against the
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`original patent claims is not the main event. The motion should provide sufficient
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`underlying facts regarding any feature added by the proposed substitute claim. For
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`IPR2013-00417
`Patent 8,036,788
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`instance, it should be revealed whether the feature was previously known
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`anywhere, in whatever setting, and whether or not the feature was known in
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`combination with any of the other elements in the claim. If any such combination
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`was known, the motion should explain the surrounding facts in that regard, and
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`why it would not have been obvious for one with ordinary skill in the art to adapt
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`that knowledge for use with the rest of the claim elements.
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`The patent owner is not expected to know everything that a hypothetical
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`person of ordinary skill in the art is presumed to know, but the patent owner is
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`expected to reveal what it does know, to the extent that it is relevant. For instance,
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`there should be a discussion of the ordinary skill in the art, with particular focus on
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`the feature added to provide the basis of patentable distinction. In that regard, it
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`would not be meaningful to say that a person of ordinary skill in the art possesses
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`this many years of education and that many years of experience. Rather, the
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`discussion should be specific about the technical knowledge pertaining to the
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`feature added. It would be useful to know whether there are textbooks or
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`conventional practices relating to the feature, and what basic skillset would be
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`possessed by one with ordinary skill in the art. A conclusory statement to the
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`effect that the closest prior art are the references in the record is not meaningful.
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`7.
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`In the motion to amend, the patent owner must show written
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`description support in the specification for each proposed substitute claim.
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`37 C.F.R. 42.121(a)(2)(ii). In that connection, it is important to note that citation
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`should be made to the original disclosure of the application as filed, rather than to
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`the patent as issued. Also, it is inadequate to show written description support for
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`just the feature added by the proposed substitute claim. Instead, the patent owner
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`must show written description support for the entire combination claimed.
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`5
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`IPR2013-00417
`Patent 8,036,788
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`8.
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`If there is any new term used in a proposed substitute claim, the
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`meaning of which reasonably can be anticipated as subject to dispute, the patent
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`owner should provide a proposed claim construction in the motion to amend. If a
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`proposed substitute claim adds a means-plus-function element, the corresponding
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`structure, material, or acts described in the specification should be identified. With
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`regard to claim construction, a statement that a certain term should be construed
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`according to its plain and ordinary meaning is unhelpful. That plain and ordinary
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`meaning should be provided in the motion, together with the supporting evidence.
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`It is
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`Order
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`ORDERED that the requirement of a “to confer” conference pursuant to
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`37 C.F.R. § 42.121(a) has been satisfied; and
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`FURTHER ORDERED that attention of the parties is directed to Idle Free
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`Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB) (Papers 26 and 66), Nichia
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`Corp. v. Emcore Corp., IPR2012-00005 (PTAB) (Papers 27 and 68), and ZTE
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`Corp. v. ContentGuard Holdings, Inc., IPR2013-00136 (PTAB) (Papers 32 and
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`33), with regard to the requirements of a motion to amend.
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`6
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`IPR2013-00417
`Patent 8,036,788
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`For Petitioner:
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`A. Antony Pfeffer
`Matthew Berkowitz
`apfeffer@kenyon.com
`mberkowitz@kenyon.com
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`For Patent Owner:
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`Thomas Wimbiscus
`Scott McBride
`Stephanie Samz
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`ssamz@mcandrews-ip.com
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`7
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