Trials@uspto.gov Paper No. 10 IPR2014-00136 Paper 22
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`571-272-7822
`IPR2014-00139 Paper 22
`Date Entered: September 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`RELOADED GAMES, INC.,
`Petitioner,
`
`v.
`
`PARALLEL NETWORKS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00136
`Patent 7,188,145 B2
`Case IPR2014-00139
`Patent 7,730,262 B21
`____________
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`SUMMARY OF CONFERENCE CONCERNING PROPOSED MOTION TO
`AMEND
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`
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`1 This Order addresses issues that are identical in related cases. Therefore, we
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
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`

`
`Case IPR2014-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
`
`
`On September 10, 2014 Parallel Networks LLC (“Patent Owner”) requested
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`a conference concerning a possible a motion to amend in these proceedings. On
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`September 17, 2014, the Board conducted a conference with the parties to discuss
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`the requirements for a motion to amend. Darren Collins and Robert Hilton
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`participated in the conference on behalf of Patent Owner, and Eric Buresh
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`participated in the conference on behalf of Reloaded Games, Inc. (“Petitioner”).
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`Judges McNamara, Droesch, and Jung also participated. During the conference, the
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`following matters were discussed.
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`A motion to amend the patent in an inter partes review is not itself an
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`amendment. Unlike an amendment in patent prosecution, amendments proposed
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`by a motion to amend are not entered as a matter of right. In an inter partes review
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`a patent owner may cancel a challenged claim or propose a reasonable number of
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`substitute claims. 35 U.S.C. § 316(d), 37 C.F.R. § 42.121(a)(3). There is no
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`provision for amending an existing claim.
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`The applicable presumption is that only one substitute claim would be
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`needed to replace each challenged claim, although the presumption may be
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`rebutted by a demonstration of need. 37 C.F.R. § 42.121(a)(3). Absent special
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`circumstances, a challenged claim can be replaced by only one claim, and a motion
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`to amend should identify specifically, for each proposed substitute claim, the
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`challenged claim that it is intended to replace. See ZTE Corp. v. ContentGuard
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`Holdings, IPR2013-00136, Paper 33 (November 7, 2013). A proposed claim
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`should be traceable to an original, challenged claim as a proposed substitute claim
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`for the challenged claim.
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` A desire to obtain a new set of claims having a hierarchy of different scope
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`typically would not constitute sufficient special circumstances because an inter
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`partes review is an adjudicatory proceeding, rather than an examination. See
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`
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`2
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`

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`Case IPR2014-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
`
`Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). Replacing a
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`claim with a substitute claim does not change claims which depend from the claim
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`that is the subject of the substitution. For example, if the movant proposes a
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`substitute for claim 1, those claims which depend from claim 1 continue to depend
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`from claim 1 as originally written. They do not incorporate the language of the
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`substitute claim. If Patent Owner desires to remodel its claim structure according
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`to a different strategy, it may consider pursuing another type of proceeding before
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`the Office.
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`A motion to amend may be denied where (i) the amendment does not
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`respond to a ground of unpatentability involved in the trial or (ii) the amendment
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`seeks to enlarge the scope of the claims of the patent or introduce new subject
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`matter. 37 C.F.R. § 42.121(a)(2). Thus, a substitute claim cannot be broader than
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`the broadest original patent claim and cannot remove a limitation from its
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`corresponding original claim. Such a claim would not be responsive to the
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`grounds of alleged unpatentability. These conditions are evaluated for each
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`substitute claim traceable to a challenged claim that the substitute claim is intended
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`to replace. A proper substitute claim under 37 C.F.R, § 42.121(a)(2) must only
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`narrow the scope of the challenged claim it replaces and may not enlarge the scope
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`of the challenged claim by eliminating any feature or limitation. A proposed
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`substitute claim is not responsive to an alleged ground of patentability if it does not
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`either include or narrow each feature or limitation of the challenged claim being
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`replaced. See Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper
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`No. 26 (June 11, 2013), Paper No. 66 (January 7, 2014).
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`Unlike patent prosecution, in an inter partes review a proposed amendment
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`to the claims is not authorized unless the movant has shown that the proposed
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`substitute claims are patentable. In all circumstances, Patent Owner must make a
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`
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`3
`
`

`
`Case IPR2014-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
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`showing of patentable distinction over the prior art. Patent Owner should identify
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`specifically the feature(s) or limitation(s) added to each substitute claim, as
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`compared to the challenged claim it replaces, and come forward with technical
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`facts and reasoning about those feature(s) or limitation(s), including the
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`construction of new claim terms, sufficient to persuade the Board that the proposed
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`substitute claim is patentable over the prior art of record, and over prior art not of
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`record, but known to Patent Owner. The burden is not on Petitioner to show
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`unpatentability, but on the Patent Owner, as the moving party, to show patentable
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`distinction over the prior art of record and other prior art known to Patent Owner.
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`See 37 C.F.R. § 42.20(c). A showing of patentable distinction may rely on the
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`declaration testimony of a technical expert about the level of ordinary skill in the
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`art and about the significance and usefulness of feature(s) or limitation(s) added by
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`the proposed claim. Idle Free Systems, Paper No. 26.
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`A mere conclusory statement by counsel in the motion to amend that one or
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`more added features or limitations are not described in any prior art or would not
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`have been suggested or rendered obvious by the prior art is facially inadequate. Id.
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`It also is insufficient for the movant simply to explain why the proposed substitute
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`claims are patentable in consideration of the challenges on which the Board
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`instituted review. Limiting the discussion either to the references already in the
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`proceeding, or to the narrow combination specifically recited in the claim, does not
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`provide a meaningful analysis. See Corning Gilbert, Inc. v. PPC Broadband, Inc.,
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`IPR2013-00347, Paper No. 20 (January 2, 2014).
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`In explaining why it believes the claimed subject matter is patentable, the
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`movant must address issues of nonobviousness, meaningfully. Although the
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`choice of how to approach the discussion of patentability of the substitute claims is
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`one for the movant, a narrative form may be useful. The movant should discuss
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`
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`4
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`

`
`Case IPR2014-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
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`the level of ordinary skill in the art, explaining the basic knowledge and skill set
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`already possessed by one of ordinary skill in the art, especially with respect to the
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`particular feature(s) or limitation(s) that the movant has added to the original
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`patent claims. The movant should identify in what context the added feature or
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`limitation, or something close to it, was already known, albeit not in the specific
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`combination recited in the claims at issue. Id.; Idle Free Systems, Paper No. 66.
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`Additionally, a motion to amend claims must clearly identify the written
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`description support for the proposed substitute claims. The written description test
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`is whether the original disclosure of the application relied upon reasonably conveys
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`to a person of ordinary skill in the art that the inventor had possession of the
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`claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co.,
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`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Pursuant to 37 C.F.R.
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`§ 42.121(b)(1), Patent Owner must set forth the support in the original disclosure
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`of the patent for each proposed substitute claim, i.e., Patent Owner must identify
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`clearly the written description support in the disclosure corresponding to the
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`earliest date upon which Patent Owner seeks to rely.
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`Merely indicating where each claim limitation individually is described in
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`the original disclosure may be insufficient to demonstrate support for the claimed
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`subject matter as a whole. While the proposed substitute claims need not be
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`described verbatim in the original disclosure in order to satisfy the written
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`description requirement, if the claim language does not appear in the same words
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`in the original disclosure, a mere citation to the original disclosure, without any
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`explanation as to why a person of ordinary skill in the art would have recognized
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`that the inventor possessed the claimed subject matter as a whole, may be
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`inadequate. See Nichia Corporation v. Emcore Corporation, IPR2012-00005,
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`Paper No. 27 (June 3, 2013).
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`
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`5
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`

`
`Case IPR2014-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
`
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`In preparing its motion to amend, the Board recommends that Patent Owner
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`review the guidance provided by the Board in the proceedings cited in this paper.
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`The parties should request a conference if any further questions need to be
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`6
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`addressed.
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`
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`PETITIONER:
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`Eric Buresh
`eric.buresh@eriseip.com
`
`Mark Lang
`mark.lang@eriseip.com
`
`
`
`PATENT OWNER:
`
`Darren Collins
`dwcollins@mcguirewoods.com
`
`Robert Hilton
`rhilton@mcguirewoods.com
`
`Aaron Pickell
`apickell@mcguirewoods.com