Paper 16
`Date: May 8, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00586
`Patent 6,738,799 B2
`____________
`
`Before JAMESON LEE, RAMA G. ELLURU, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
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`IPR2013-00586
`Patent 6,738,799
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`
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`Introduction
`A conference call was held on May 7, 2014, between respective counsel for
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`the parties and Judges Lee, Elluru, and Busch. Patent Owner (“Clouding”)
`initiated the conference call to satisfy the “to confer” requirement of 37 C.F.R.
`§ 42.121(a) with regard to the filing of a motion to amend claims. We asked what
`specific questions counsel for Patent Owner may have in that regard, and received
`in response a general question—how does Patent Owner make out a prima facie
`case that it is entitled to a proposed substitute claim, not considering any
`opposition by the Petitioner?
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`Discussion
`A prima facie case that the Patent Owner is entitled to a substitute claim is
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`evaluated without considering any rebuttal by the Petitioner. If the facts are on the
`side of the Patent Owner, a prima facie case can be established by conveying those
`facts and applying the law. Patent Owner’s inquiry really pertains to what kind of
`facts should be presented and discussed in a motion to amend.
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`With regard to anticipation as the basis of potential unpatentability of the
`proposed substitute claim, state, but only if true, that Patent Owner is unaware of
`any prior art which includes all of the features in the proposed substitute claim,
`arranged precisely as recited in the claim. With regard to obviousness as the basis
`of potential unpatentability of the proposed substitute claim, present and discuss
`facts which are pertinent to the first three underlying factual inquiries of Graham v.
`John Deere Co., 383 U.S. 1, 17-18 (1966): (1) the scope and content of the prior
`art, (2) differences between the claimed subject matter and the prior art, and (3) the
`level of ordinary skill in the art, with special focus on the feature(s) added relative
`to an original patent claim being replaced by the proposed substitute claim.
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`2
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`IPR2013-00586
`Patent 6,738,799
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`Typically, prior art information relating to the feature(s) that were added to
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`an original patent claim to form a proposed substitute claim is scarce in the record.
`Such information is relevant to our review of the proposed substitute claim(s). If
`Patent Owner is not forth coming with such information, we would notice the
`deficiency. It is a deficiency because, for a motion to amend claims, the burden is
`on the Patent Owner to establish patentability of the proposed substitute claim. See
`37 C.F.R. § 42.20(c).
`
`An example using letters A through Y (“A-Y”) to represent the scope of an
`original patent claim was discussed. If invention having features A-Y is
`unpatentable based on the prior art asserted by the Petitioner, and if Patent Owner
`presents a proposed substitute claim which adds feature Z to arrive at an invention
`including features A-Z, the motion to amend should focus on providing pertinent
`information with respect to feature Z. Patent Owner should not bypass the relevant
`inquiry by stating that the closest prior art already is of record, which may in fact
`be true if the prior art of record accounts for features A-Y of an invention directed
`to features A-Z, i.e., 25 of 26 claim features.
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`If a statement regarding what constitutes the closest prior art is made, the
`underlying basis supporting that assertion should be explained. Such a statement is
`not meaningful, if not accompanied by sufficient explanation, because the
`subjective focus is uncertain. Patent Owner’s motion would be much more
`persuasive if, instead, Patent Owner specifically addresses feature Z by indicating,
`if true, that feature Z was known only in the context of Situation 1, Circumstance
`2, and Application 3, and explaining why one with ordinary skill in the art would
`not have reason to combine feature Z from those scenarios with features A-Y to
`form an invention including features A-Z. Thus, Patent Owner may discuss prior
`art categorically, rather than individually. With regard to the prior art references
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`IPR2013-00586
`Patent 6,738,799
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`asserted by the Petitioner, Patent Owner may point out, if true, that they belong to
`Situation 1, Circumstance 2, or Application 3, and, therefore, the categorical
`discussions of those types of prior art demonstrate the inapplicability of the
`specific prior art asserted by the Petitioner.
`
`Patent Owner then asked: (1) should a search be performed by the Patent
`Owner? and (2) should an expert declaration be presented?
`
`Whether a prior art search should be performed by the Patent Owner is not a
`question with a definite answer, and we should not be advising any Patent Owner
`on whether to conduct a search of the prior art. If the Patent Owner is sufficiently
`confident in its knowledge of the pertinent facts regarding feature Z to make a firm
`representation in its motion to amend, perhaps a prior art search is not necessary,
`and the Patent Owner may rely on a declaration from the inventor or an expert
`witness. If, on the other hand, the Patent Owner is not sufficiently confident about
`its knowledge of feature Z or is unable to explain why a claim drawn to features A-
`Z is patentable in general, even with the help of an expert declaration, perhaps a
`prior art search should be made. The answer depends on the comfort level of the
`Patent Owner both with regard to its knowledge and with regard to its assessment
`of what would be persuasive.
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`As for whether an expert declaration should be presented to support the
`Patent Owner’s motion to amend claims, we replied that for establishing the
`underlying facts for an obviousness determination under Graham, supra, the use of
`and reliance on an expert declaration may be crucial and that attorney argument is
`not a substitute for evidence. Even with regard to anticipation or lack thereof, an
`expert declaration is helpful in corroborating Patent Owner’s novelty assertion.
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`IPR2013-00586
`Patent 6,738,799
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`We are not saying, however, that an expert declaration is always required. It
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`all depends on the circumstances, including the comfort level of the Patent Owner
`with regard to both its knowledge and its assessment of what would be persuasive.
`For instance, if Patent Owner has conducted a thorough and professional prior art
`search, with respect to the proposed substitute claim, and with emphasis on feature
`Z, that may be sufficient to support the motion to amend without an expert
`declaration. Each case depends on its own facts. The particular situations are
`different, for different motions to amend claims.
`
`For additional guidance regarding the mechanics of making an amendment
`and other requirements for a motion to amend claims, the parties may refer to
`Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419
`(PTAB) (Paper 32); Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027
`(PTAB) (Papers 26 and 66), Nichia Corp. v. Emcore Corp., IPR2012-00005
`(PTAB) (Papers 27 and 68), and ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00136 (PTAB) (Papers 32 and 33).
` Order
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`It is
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`ORDERED that the requirement of a “to confer” conference for a motion to
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`amend claims pursuant to 37 C.F.R. § 42.121(a) has been satisfied.
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`IPR2013-00586
`Patent 6,738,799
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`For Petitioner:
`Michael Kiklis
`Scott McKeown
`cpdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`
`For Patent Owner:
`Tarek Fahmi
`Amy Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
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`6
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