Paper 41
`Date: June 26, 2014
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`Trials@uspto.gov
`571-272-7822
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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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`
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`Order
`Conduct of Proceedings
`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 June 25, 2014, a telephone conference call was held between respective
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`counsel for the parties and Judges Lee, Anderson, and Parvis. Patent Owner
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`(“AVS”) initiated the conference call to discuss three issues. First, it sought
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`clarification with regard to its Motion to Amend Claims, which was filed on March
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`24, 2014 (Paper 24), over 3 months ago. According to counsel for Patent Owner,
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`the parties disagree as to whether Patent Owner is required, in its Motion to Amend
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`and with regard to entitlement to an earlier filing date, to point to supporting
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`disclosure in each ancestral application that is in the chain of applications leading
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`to the application with the earliest filing desired by the Patent Owner. Second, it
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`sought authorization to file an additional Motion to Amend Claims to render moot
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`Petitioner’s argument that Patent Owner’s proposed substitute claims are indefinite
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`under 35 U.S.C. § 112, second paragraph. Third, it sought authorization to file
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`supplemental evidence.
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`Discussion
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`1.
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`With regard to a Motion to Amend Claims, the Patent Owner bears the
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`burden of proof. 37 C.F.R. § 42.20(c). The effective filing date is highly pertinent
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`to the level of ordinary skill in the art and what prior art is applicable against the
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`Patent Owner’s proposed substitute claims. If the Patent Owner desires an
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`effective filing date that is prior to the actual filing date of its involved patent, it is
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`incumbent upon the Patent Owner to make the necessary showing in that regard.
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`If any application in the priority chain fails to make the requisite disclosure
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`of the claimed subject matter under 35 U.S.C. § 112, first paragraph, the later-filed
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`application is not entitled to the benefit of the filing date preceding the break in
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`disclosure within the priority chain. Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed.
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`2
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`IPR2013-00417
`Patent 8,036,788
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`Cir. 2012). To gain the benefit of the filing date of an earlier-filed application
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`under 35 U.S.C. § 120, each application in the chain leading back to the earlier
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`application must comply with the written-description requirement of 35 U.S.C.
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`§ 112, first paragraph. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378
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`(Fed. Cir. 2007); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
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`1997); In re Hogan, 559 F.2d 595, 609 (CCPA 1977); In re Schneider, 481 F.2d
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`1350, 1356 (CCPA 1973).
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`Counsel for Patent Owner identified the pertinent chain of continuity to be
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`as follows: Application 08/476,077  Application 09/137,918  Application
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`09/356,314  Application 09/925,062  Application 10/701,361  Application
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`11/082,739  Application 11/836,274 (issued as Patent Owner’s involved patent
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`in this proceeding). The earliest ancestral application in the chain is Application
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`08/476,077. There are five intervening applications between Patent Owner’s
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`involved patent and Application 08/476,077. Yet, Patent Owner’s Motion to
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`Amend Claims discussed supporting disclosure only of the application that issued
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`as the involved patent and Application 08/476,077, not including the disclosures of
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`the five intermediate applications, which are each in the chain of continuity as a
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`continuation-in-part of another application in the chain.
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`Counsel for Patent Owner inquired whether Patent Owner can, in its Reply
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`to Petitioner’s Opposition to Patent Owner’s Motion to Amend Claims, address the
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`supporting disclosure of the five intermediate applications. Counsel for Petitioner
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`objected to such action, noting that Petitioner would be prejudiced both because
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`Patent Owner should have addressed that issue initially in the Motion to Amend
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`Claims, and because Petitioner is now without opportunity to respond. Counsel for
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`Petitioner also pointed out that there are numerous continuity paths leading back to
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`Application 08/476,077, and Patent Owner should not be able to pick which path to
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`IPR2013-00417
`Patent 8,036,788
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`take, after having seen Petitioner’s Opposition to the Motion to Amend Claims.
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`Although counsel for Patent Owner states that Petitioner in its Opposition does not
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`point out exactly what element is not supported in the disclosure of Application
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`08/476,477, the Opposition does assert that Patent Owner did not establish
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`entitlement to the filing date of Application 08/476,477.
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`Counsel for Patent Owner further represented that the disclosures to be
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`relied on in the intervening applications would be essentially the same as that
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`which was relied on in Application 08/476,077, but fell short of representing that
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`such disclosures are exactly the same. Note that the intervening applications are
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`continuation-in-part applications of the immediately previous application in the
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`chain and do not share the same disclosure. Petitioner does not accept the assertion
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`that the disclosures are the same. In any event, even assuming that the disclosures
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`are the same, Petitioner did not waive the right to oppose and challenge Patent
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`Owner’s assertions, if made, with respect to the intervening applications.
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`Petitioner had two months to prepare an opposition to Patent Owner’s
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`Motion to Amend Claims. Oral Argument has been scheduled for August 14,
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`2014. At this late stage in the proceeding, there is insufficient time, in any event,
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`to provide Petitioner sufficient time to respond to Patent Owner’s Reply. In that
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`regard, counsel for Petitioner indicated that it would want to submit declaration
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`evidence on the subject, if Patent owner is allowed to address the subject.
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`For all of the foregoing reasons, we determined that it would be improper for
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`Patent Owner, in its Reply to Petitioner’s Opposition to Patent Owner’s Motion to
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`Amend Claims, to address and account for the supporting disclosures, if any, in
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`any of the five intervening ancestral applications.
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`Counsel for Patent Owner then asked permission to file another Motion to
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`Amend Claims, in which it would make all the necessary showings with regard to
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`IPR2013-00417
`Patent 8,036,788
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`the intermediate applications. We explained that that would be equally improper,
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`for the same reasons why the matter should not be addressed in Patent Owner’s
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`Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend Claims.
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`2.
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`As explained by counsel for Patent Owner, Petitioner argued that Patent
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`Owner’s proposed substitute claims are indefinite under 35 U.S.C. § 112, second
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`paragraph, and that certain claim term is subject to two competing interpretations.
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`Counsel for Patent Owner stated that Patent Owner would like to file a second
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`Motion to Amend Claims to cover the contingency that the Board concludes
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`Petitioner’s indefiniteness argument is persuasive. It is represented by counsel for
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`Patent Owner that the Second Motion to Amend Claims simply would make more
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`clear which interpretation was intended.
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`The Patent Owner’s proposal is inconsistent with the overall framework of
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`this proceeding. There would be no end to this proceeding if the Patent Owner is
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`permitted to keep filing further proposed amendments on the contingency that the
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`Board concludes in favor of the Petitioner with regard to an earlier Motion to
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`Amend claims. Counsel for Patent Owner represents that Patent owner will not
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`ask to file any further Motions to Amend on the contingency that the second
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`Motion to Amend Claims still fails, but even that does not justify the filing of the
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`second Motion to Amend Claims.
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`A Patent Owner has no right to file a second Motion to Amend Claims. The
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`possibility that the Board may rule in favor of the Petitioner on the Patent Owner’s
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`first Motion to Amend Claims is insufficient justification for authorizing the filing
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`of a second Motion to Amend Claims. In the absence of extraordinary or special
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`circumstance, the consequences of a failed Motion to Amend Claims is that the
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`Patent Owner is not entitled to any substitute claim, not that the Patent Owner is
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`IPR2013-00417
`Patent 8,036,788
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`free to file another Motion to Amend Claim or to have a second Motion to Amend
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`Claims considered. It does not matter that in this case, Petitioner’s Opposition to
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`Patent owner’s Motion to Amend Claims already addressed both possible
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`interpretations insofar as prior art is concerned. Indefiniteness itself is a basis of
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`unpatentability. Counsel for Petitioner also correctly points out that it would be
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`inequitable to the Petitioner to allow the Patent Owner to pick which one of two
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`interpretations to adopt by way of a further Motion to Amend Claims, after the
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`indefiniteness issue has been identified and explained by the Petitioner.
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`Although a second Motion to Amend Claims perhaps renders moot the
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`deficiencies of a first Motion to Amend Claims, that does not justify authorizing
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`the filing of a second Motion to Amend Claims, in the absence of good reasons
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`why the Patent Owner should get an opportunity to cure the deficiencies in its first
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`Motion to Amend Claims. Moreover, counsel for Patent Owner does not admit to
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`any deficiency in the Patent Owner’s first Motion to Amend Claims. That does not
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`add to any justification for allowing a second Motion to Amend Claims.
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`3.
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`Petitioner applied a prior art reference “Fry” (Ex. 1005) against the Patent
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`Owner’s claims. According to the Patent owner, however, Petitioner has not
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`sufficiently shown that Fry constitutes prior art. Counsel for Patent Owner
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`indicates that Patent Owner has received, recently, from Petitioner 12 copies of the
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`“Fry” reference, each with a date stamp that is subsequent to the effective filing
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`date of Patent Owner’s involved patent. The Patent Owner would like to submit
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`those 12 copies as supplemental evidence. The subject then turned to what
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`introduction would Patent Owner submit with the 12 copies.
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`6
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`IPR2013-00417
`Patent 8,036,788
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`We proposed and the parties agreed that the Patent Owner is authorized to
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`submit the 12 copies of the “Fry” reference, together with a single introductory
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`paragraph containing a joint statement as to what are the 12 copies of “Fry.”
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`It is
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`Order
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`ORDERED that Patent Owner is not authorized, in Patent Owner’s Reply to
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend Claims, to address the
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`disclosure of the five intermediate applications in the continuity chain leading back
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`to Application 08/476,077;
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`FURTHER ORDERED that Patent Owner is not authorized to file a second
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`Motion to Amend Claims; and
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`FURTHER ORDERED that by July 3, 2014, Patent Owner is authorized to
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`file supplemental evidence in the form of the 12 copies of “Fry” discussed above,
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`together with a joint statement of the parties which introduces the supplemental
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`evidence, limited to one paragraph no more than one page in length; the 12 copies
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`of “Fry” should be submitted as separate exhibits each with a different exhibit
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`number.
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`7
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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
`Christopher Scharff
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
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