`571-272-7822
`
`
`
`
`Paper 16
`Entered: October 27, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC. and MOTOROLA MOBILITY LLC,
`Petitioners,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`
`Case IPR2014-00452
`Patent 6,323,853 B1
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2014-00452
`Patent 6,323,853 B1
`
`
`A conference call in the above proceeding was held on October 20,
`2014, between respective counsel for Petitioners and Patent Owner, and
`Judges Zecher, Powell, and Cherry. Patent Owner initiated the conference
`call to satisfy the requirement of conferring with us prior to filing a Motion
`to Amend under 37 C.F.R. § 42.121(a).
`DISCUSSION
`In the call, Patent Owner indicated that it sought to present in its
`Motion to Amend an independent claim containing all of the current
`limitations of independent claim 1 plus certain additional words. We
`informed Patent Owner that the proper way to do so is to present a proposed
`substitute independent claim 80 with all of the limitations of independent
`claim 1 and the desired additional words. We further informed Patent
`Owner that the proposed substitute independent claim 80 must show the
`words added compared to independent claim 1, and must appear within the
`Motion to Amend, itself.
`After receiving this advice, Patent Owner sought guidance regarding
`how it might structure the Motion to Amend in order to preserve the
`substance of dependent claims 2–79 if independent claim 1 ultimately gets
`replaced with proposed substitute independent claim 80. We informed
`Patent Owner that it could propose substitute dependent claims that include
`the same limitations as dependent claims 2–79 but depend from proposed
`substitute independent claim 80. We further informed Patent Owner that, if
`it proposes substitute dependent claims that are the same as claims 2–79 but
`are amended only to depend from proposed substitute independent claim 80,
`Patent Owner may list such proposed substitute dependent claims in a claims
`appendix. We indicated that, if Patent Owner files such a claims appendix,
`
`2
`
`
`
`IPR2014-00452
`Patent 6,323,853 B1
`
`the claims appendix will not count toward the fifteen page limit for a Motion
`to Amend. See 37 C.F.R. § 42.24(a)(v). We noted, however, that Patent
`Owner must list and address proposed substitute independent claim 80
`within the Motion to Amend, itself.
`In view of this discussion, Petitioners asked certain questions
`regarding how any proposed substitute dependent claims listed in a claims
`appendix would be treated on the merits. We took this opportunity to
`remind the parties that Patent Owner bears the burden of proof to establish
`the patentability of any proposed substitute claim. See 37 C.F.R. § 42.20(c);
`Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 2
`(PTAB June 11, 2013) (Paper 26). For further guidance regarding the
`substance and mechanics of a Motion to Amend under 37 C.F.R. § 42.121,
`we directed the parties to Toyota Motor Corp. v. American Vehicular
`Sciences LLC, Case IPR2013-00423 (PTAB March 7, 2014) (Paper 27).
`ORDER
`In consideration of the foregoing, it is:
`ORDERED that Patent Owner has satisfied the requirement of
`conferring with us prior to filing a Motion to Amend under 37 C.F.R.
`§ 42.121(a); and
`FURTHER ORDERED that Patent Owner must address any proposed
`substitute independent claim in the Motion to Amend, itself, but it may
`provide a claims appendix that lists proposed substitute dependent claims,
`each of which is amended only to depend from the proposed substitute
`independent claim. A claims appendix satisfying this requirement will not
`count toward the fifteen page limit for the Motion to Amend.
`
`
`
`3
`
`
`
`IPR2014-00452
`Patent 6,323,853 B1
`
`PETITIONER:
`
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`
`PATENT OWNER:
`
`Robert M. Asher
`Bruce D. Sunstein
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`
`4
`
`
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