Trials@uspto.gov Paper No. 10 Paper No. 18
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`571-272-7822
`Date Entered: August 15, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GREENE’S ENERGY GROUP, LLC, INC.,
`Petitioner,
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`v.
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`OIL STATES ENERGY SERVICES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00216
`Patent 6,179,053 B1
`____________
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`
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`SCOTT E. KAMHOLZ, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`On August 13, 2014, Patent Owner requested a conference concerning a
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`Motion to Amend that it intends to file. The Board conducted a conference with
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`both parties on August 14, 2014. Patent Owner indicated that it intended to
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`propose one substitute claim for each of the two claims under review. Patent
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`Owner declined the Board’s invitation to discuss the proposed motion to amend in
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`further detail. The Board offered the parties some guidance on the content and
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`procedure for a Motion to Amend, which guidance is repeated and expanded upon
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`below.
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`A motion to amend claims in an inter partes review is not itself an
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`amendment. Unlike a claim amendment in patent prosecution, amendments
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`proposed by a motion to amend are not entered as a matter of right.
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`A motion to amend is limited to 15 pages, as is the opposition. A reply to an
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`opposition is limited to 5 pages.
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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). 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,
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`Paper 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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`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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`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). In explaining why it believes the
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`claimed subject matter is patentable, the movant must address issues of
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`nonobviousness, meaningfully. The movant should discuss the level of ordinary
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`skill in the art, explaining the basic knowledge and skill set already possessed by
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`one of ordinary skill in the art, especially with respect to the particular feature(s) or
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`limitation(s) that the movant has added to the original patent claims. The movant
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`should identify in what context the added feature or limitation, or something close
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`to it, was already known, albeit not in the specific combination recited in the
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`claims at issue. Id.; Idle Free Systems, Paper No. 66.
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`A motion to amend claims must clearly identify the written description
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`support for the proposed substitute claims. The written description test is whether
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`the original disclosure of the application relied upon reasonably conveys to a
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`person of ordinary skill in the art that the inventor had possession of the claimed
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`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); Corning Inc. v. DSM IP Assets B.V., IPR2013-00050,
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`Paper No. 77, 42-47 (May 1, 2014).
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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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`Patent Owner should also consider the guidance provided in ZTE Corp. v.
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`ContentGuard Holdings, IPR2013-00136, Paper 33 (November 7, 2013). The
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`parties should request a conference if any further questions need to be addressed.
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`It is
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`ORDERED that Patent Owner has satisfied its obligation under
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`37 C.F.R. § 42.121(a) to confer with the Board before filing the Motion to Amend.
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`
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`For PETITIONERS:
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`John Feldhaus
`Andrew Cheslock
`FOLEY & LARDNER LLP
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`For PATENT OWNER:
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`C. Erik Hawes
`Archis V. Ozarkar
`MORGAN, LEWIS & BOCKIUS LLP
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