`571-272-7822
`
`
`Paper 11
`
`Entered: August 2, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00125 (Patent 8,290,778 B2)1
`Case IPR2016-00156 (Patent 8,296,146 B2)
`____________
`
`
`
`Before MICHAEL R. ZECHER, KEVIN W. CHERRY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are identical in both cases. We exercise
`our discretion to issue one Decision to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2016-00125 (Patent 8,290,778 B2)
`IPR2016-00156 (Patent 8,296,146 B2)
`
`
`On July 28, 2016, a conference call was held in these proceedings
`between counsel for Volkswagen Group of America, Inc. (“Petitioner”),
`counsel for West View Research, LLC (“Patent Owner”), and Judges
`Easthom, Chung, Cherry, and Zecher. Patent Owner requested the call to
`discuss Patent Owner’s plan to file a motion to amend in these proceedings.
`Patent Owner informed us during the conference call that it intends to
`file a non-contingent Motion to Amend seeking to amend all of the
`challenged claims in each of these proceedings. Patent Owner noted that,
`because there are large number of proceedings involving U.S. Patent No.
`8,290,778 B2, U.S. Patent No. 8,296,146 B2, and other related patents, as
`well as the extensive prosecution history for these patents, the prior art
`known to Patent Owner is voluminous. Patent Owner requested guidance as
`to what prior art it should focus on in each Motion to Amend. Although we
`declined to provide any specific directions, Patent Owner should focus, at a
`minimum, on the prior art of record in these inter partes review proceedings
`and prior art known to Patent Owner that it discerns is the most relevant to
`each added limitation. See MasterImage 3D, Inc. v. RealD Inc., Case
`IPR2015-00040, slip op. 3 (PTAB July 15, 2015) (Paper 42) (precedential).
`We directed Patent Owner to the MasterImage 3D case for further details
`regarding the duty to disclose in the context of a motion to amend.
`Patent Owner also should be aware that a non-contingent motion to
`amend means that its original claims will be cancelled, and we will consider
`only the patentability of the amended claims in our Final Written Decisions.
`Entry of proposed amendments is not automatic, but occurs only upon Patent
`Owner demonstrating the patentability of each proposed substitute claim.
`See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1303–05 (Fed. Cir.
`2
`
`
`
`
`
`IPR2016-00125 (Patent 8,290,778 B2)
`IPR2016-00156 (Patent 8,296,146 B2)
`
`2015). To meet this requirement, Patent Owner must show that the proposed
`amendments are narrowing in scope, that each proposed substitute claim is
`supported by the written description of the application upon which the
`substitute claims rely, addressing the patentability of each proposed
`substitute claim over the prior art of record and the prior art known to Patent
`Owner, and accounting for the basic knowledge and skill set possessed by a
`person of ordinary skill in the art even without reliance on any particular
`prior art reference. See 37 C.F.R. § 42.121(b). As we advised Patent
`Owner, these showings must be made for each claim that Patent Owner
`seeks to amend. For further guidance on a motion to amend, we directed the
`parties to the following representative decisions: (1) Idle Free Systems, Inc.
`v. Bergstrom, Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26)
`(informative); (2) Corning Optical Commc’n RF, LLC, v. PPC Broadband,
`Inc., Case IPR2014-00441 (PTAB Oct. 20, 2014) (Paper 19); (3)
`MasterImage 3D, Case IPR2015-00040, Paper 42; (4) Toyota Motor Corp.
`v. American Vehicular Sciences LLC, Case IPR2013-00422 (PTAB Mar. 7,
`2014) (Paper 25); and (5) Riverbed Tech., Inc. v. Silver Peak Sys., Inc., Case
`IPR2013-00402 (PTAB Dec. 30, 2014) (Paper 35).
`In consideration of the foregoing, it is hereby ORDERED that Patent
`Owner has satisfied the conference requirement of 37 C.F.R. § 42.121(a) for
`these proceedings.
`
`3
`
`
`
`
`
`
`
`IPR2016-00125 (Patent 8,290,778 B2)
`IPR2016-00156 (Patent 8,296,146 B2)
`
`For PETITIONER:
`Michael J. Lennon
`Clifford A. Ulrich
`Kenyon & Kenyon LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
`
`
`
`
`
`4
`
`For PATENT OWNER:
`
`Kim H. Leung
`Peter J. Gutierrez, III
`Gazdzinski & Associates, PC
`kim.leung@gazpat.com
`peter.gutierrez@gazpat.com
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