Trials@uspto.gov
`571-272-7822
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`Paper 20
`Entered: November 14, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC, SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MICROGRAFX, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00532
`Patent 5,959,633
`____________
`
`
`Before SALLY C. MEDLEY, RICHARD E. RICE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`RICE, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §§ 42.5, 42.121(a)
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`
`
`571-272-7822
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`Paper 20
`Entered: November 14, 2014
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC, SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MICROGRAFX, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00532
`Patent 5,959,633
`____________
`
`
`Before SALLY C. MEDLEY, RICHARD E. RICE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`RICE, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §§ 42.5, 42.121(a)
`
`
`
`
`Case IPR2014-00532
`Patent 5,959,633
`
`
`I.
`
`INTRODUCTION
`
`On November 13, 2014, a telephone conference was held between
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`respective counsel for the parties and Judges Medley, Rice, and Parvis.
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`Patent Owner initiated the telephone conference pursuant to 37 C.F.R.
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`§ 42.121(a) to confer with the panel with regard to filing a motion to amend
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`one or more of the claims of U.S. Patent No. 5,959,633 (Ex. 1001, “the
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`’633 Patent”). Patent Owner briefly outlined, in broad terms, the nature of
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`the contemplated motion/amendments, and the panel provided some general
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`guidance with regard to both the mechanics and substance of a motion to
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`amend claims under 37 C.F.R. § 42.121.
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`II. DISCUSSION
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`The following items were discussed:
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`1.
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`As noted above, Patent Owner briefly outlined, in broad terms,
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`the nature of the contemplated motion/amendments. In particular, Patent
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`Owner stated that it contemplated filing a contingent motion to amend
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`independent claims 1 and 8 of the ’633 Patent to add one or more limitations
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`to each claim.
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`2. We advised that there should be no “amending in place.” Any
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`claim with a changed scope, subsequent to the amendment, should be
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`included in the claim listing as a proposed substitute claim, and have a new
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`claim number. For example, as the ’633 Patent has 28 claims, Patent Owner
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`can give new claim numbers 29 and 30 to its two proposed substitute claims.
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`Using new claim numbers for substitute claims avoids confusion as to
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`whether a dependent claim depends from a claim in its form prior to the
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`Case IPR2014-00532
`Patent 5,959,633
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`amendment or subsequent to the amendment. We clarified, in that regard,
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`that an unchanged dependent claim, which depends from a canceled claim,
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`still retains its same scope and does not need to be rewritten.
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`3. We advised that a motion to amend claims only may cancel
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`claims or propose substitute claims. A request to cancel claims will not be
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`regarded as contingent. A request to substitute claims, however, is always
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`contingent. That means a proposed substitute claim will be considered only
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`if the original patent claim it replaces is determined unpatentable or is
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`canceled.
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`4. We advised that Patent Owner bears the burden of proof to
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`establish that it is entitled to the relief requested in the motion to amend.
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`37 C.F.R. § 42.20(c). If the motion is granted, the proposed substitute
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`claims will be added to the involved patent, without examination.
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`Accordingly, Patent Owner must show patentability over the prior art that is
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`relevant to the substitute claims, and not just over the references applied by
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`Petitioner against the original patent claims.
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`5.
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`In other words, explaining patentability over references applied
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`by Petitioner against the original patent claims is not the main issue. The
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`motion should provide sufficient underlying facts regarding any feature
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`added by the proposed substitute claim. For instance, it should be revealed
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`whether the feature was previously known anywhere, in whatever setting,
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`and whether or not the feature was known in combination with any of the
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`other elements in the claim. If any such combination was known, the motion
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`should explain the surrounding facts in that regard, and why it would not
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` 3
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`Case IPR2014-00532
`Patent 5,959,633
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`have been obvious for one with ordinary skill in the art to adapt that
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`knowledge for use with the rest of the claim elements.
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`6.
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`Patent Owner will not be expected to know everything that a
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`hypothetical person of ordinary skill in the art is presumed to know, but
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`Patent Owner will be expected to reveal what it does know, to the extent that
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`it is relevant. For instance, there should be a discussion of the ordinary skill
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`in the art, with particular focus on the feature added to provide the basis of
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`patentable distinction. In that regard, it would not be meaningful to say that
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`a person of ordinary skill in the art possesses this many years of education
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`and that many years of experience. Rather, the discussion should be specific
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`about the technical knowledge pertaining to the feature added. It would be
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`useful to know whether there are textbooks or conventional practices
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`relating to the feature, and what basic skillset would be possessed by one
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`with ordinary skill in the art. A conclusory statement to the effect that the
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`closest prior art are the references in the record is not meaningful. A prior
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`art search and/or expert declaration may be useful to demonstrate the scope
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`and content of the prior art, but neither is required.
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`7.
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`If there is any new term used in a proposed substitute claim, the
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`meaning of which reasonably can be anticipated as subject to dispute, Patent
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`Owner should provide a proposed claim construction in the motion to
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`amend. If a proposed substitute claim adds a means-plus-function element,
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`the corresponding structure, material, or acts described in the Specification
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`should be identified. With regard to claim construction, a statement that a
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`certain term should be construed according to its plain and ordinary meaning
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` 4
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`Case IPR2014-00532
`Patent 5,959,633
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`is unhelpful. That plain and ordinary meaning should be provided in the
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`motion, together with the supporting evidence.
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`8. We direct attention of the parties to International Flavors &
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`Fragrances Inc. v. The United States of America, Case IPR2013-00124
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`(PTAB May 20, 2014) (Paper 12) (granting-in-part motion to amend), along
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`with the other cases cited in our Order below, with regard to the
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`requirements for a motion to amend. The decision is available at:
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`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
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`
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`In addition to the subjects discussed specifically during the telephone
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`conference, the panel provides the following additional guidance:
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`9.
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`A claim listing is required by 37 C.F.R. § 42.121(b). Each
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`proposed substitute claim must be reproduced in the claim listing, and the
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`claim listing should be set forth in the motion itself, and not a claim
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`appendix. Also, for each proposed substitute claim, the motion must show,
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`clearly, the changes of the proposed substitute claim with respect to the
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`original patent claim that it is intended to replace. No particular form of
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`showing changes is required, but use of brackets to indicate deleted text and
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`underlining to indicate inserted text is suggested.
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`10. Although there is a presumption that only one substitute claim
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`is needed for each original patent claim, that does not mean Patent Owner is
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`in compliance so long as the total number of claims before and after the
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`amendment remain the same. The requirement is viewed on a per claim
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`basis, and the proposed substitute claim must be traceable back to the
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`original patent claim that it is intended to replace. In general, claim X is
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`Case IPR2014-00532
`Patent 5,959,633
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`properly named as a substitute claim for claim Y if claim X includes all of
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`the features of claim Y. If Patent Owner needs more than one substitute
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`claim for a particular patent claim, the motion should articulate a special
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`circumstance to justify the request. If the additional proposed substitute
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`claim is patentably distinct from the first substitute claim, given the first
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`substitute claim as prior art, that likely would be sufficient justification.
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`11. A proposed substitute claim should be responsive to the ground
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`of unpatentability applicable to the original patent claim for which it is a
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`substitute. See 37 C.F.R. § 42.121(a)(2)(i). Generally, that means the
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`proposed substitute claim should not eliminate any feature or element of the
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`original patent claim which it is intended to replace. If there is a special
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`circumstance to justify deviation from that general rule, the motion should
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`provide adequate and persuasive explanation. A proposed substitute claim
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`also is prohibited from enlarging the scope of the patent claims. See
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`37 C.F.R. § 42.121(a)(2)(ii).
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`12.
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`In the motion to amend, Patent Owner must show written
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`description support in the Specification for each proposed substitute claim.
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`See 37 C.F.R. 42.121(a)(2)(ii). In that connection, it is important to note that
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`citation should be made to the original disclosure of the application as-filed,
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`rather than to the patent as-issued. Also, it is inadequate to show written
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`description support for just the feature added by the proposed substitute
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`claim. Instead, Patent Owner must show written description support for all
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` 6
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`of the claimed features.
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`Case IPR2014-00532
`Patent 5,959,633
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`It is
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`Order
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`ORDERED that the requirement of a “to confer” conference pursuant
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`to 37 C.F.R. § 42.121(a) has been satisfied; and
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`FURTHER ORDERED that attention of the parties is directed to:
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`Nichia Corp. v. Emcore Corp., IPR2012-00005 (PTAB) (Papers 27 and 68);
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`Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB) (Papers 26
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`and 66); ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00136
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`(PTAB) (Papers 32 and 33); Respironics, Inc. v. Zoll Medical Corp.,
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`IPR2013-00322 (Paper 13); Toyota Motor Corp. v. American Vehicular
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`Sciences LLC, IPR2013-00419 (Paper 32); and Int’l Flavors & Fragrances
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`Inc. v. The United States of America, IPR2013-00124 (Paper 12), with
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`regard to the requirements for a motion to amend.
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` 7
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` 8
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`Case IPR2014-00532
`Patent 5,959,633
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`For PETITIONER:
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`John Phillips
`phillips@fr.com
`
`Michael Hawkins
`IPR19473-0309IP1@fr.com
`
`
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`For PATENT OWNER
`
`Douglas Wilson
`dwilson@hpcllp.com
`
`Michael Heim
`mheim@hpcllp.com
`
`Nathan Davis
`ndavis@hpcllp.com
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