Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: November 9, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC. and
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`Petitioner,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-00946
`Patent 7,268,703 B1
`____________
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 14
`Entered: November 9, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC. and
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`Petitioner,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-00946
`Patent 7,268,703 B1
`____________
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`
`A conference call was held on November 6, 2017, among counsel for
`
`the parties and Judges Arbes, Giannetti, and Howard. Patent Owner
`
`requested the conference call to satisfy the requirement of 37 C.F.R.
`
`§ 42.121(a) for a conference with the Board before filing a motion to amend
`
`claims. No specific proposed amendments were discussed. After discussing
`
`the matter with the parties, the Board agreed to provide additional guidance.
`
`For the convenience of the parties, further guidance regarding the
`
`requirements of a motion to amend is provided below, and additional
`
`guidance may be found in the Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,766–48,767 (Aug. 14, 2012).
`
`A motion to amend claims only may cancel claims or propose
`
`substitute claims. See 35 U.S.C. § 316(d)(1); 37 C.F.R. § 42.121(a)(3). A
`
`request to cancel claims will not be regarded as contingent. However, we
`
`shall treat a request to substitute claims as contingent. That means a
`
`proposed substitute claim will be considered only if the original patent claim
`
`it replaces is determined unpatentable.
`
`A claim listing, reproducing each proposed substitute claim, is
`
`required. See 37 C.F.R. § 42.121(b). Any claim with a changed scope,
`
`subsequent to the amendment, should be included in the claim listing as a
`
`proposed substitute claim, and have a new claim number. This includes any
`
`dependent claim Patent Owner intends as dependent from a proposed
`
`substitute independent claim. For each proposed substitute claim, the
`
`motion must show, clearly, the changes of the proposed substitute claim with
`
`respect to the original patent claim which it is intended to replace. No
`
`particular form is required, but use of brackets to indicate deleted text and
`
`underlining to indicate inserted text is suggested.
`
`
`
`2
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`
`During the conference, the Panel advised Patent Owner of the need to
`
`address all of the statutory requirements for a motion to amend as set forth in
`
`35 U.S.C. § 316(d). Specifically, Patent Owner was reminded that the
`
`statute provides that for each challenged claim, Patent Owner may only
`
`propose a reasonable number of substitute claims. See 35 U.S.C.
`
`§ 316(d)(1)(B). To the extent Patent Owner seeks to propose more than one
`
`substitute claim for each cancelled claim, Patent Owner shall explain in the
`
`motion to amend the need for the additional claims and why the number of
`
`proposed amended claims is reasonable. See 35 U.S.C. § 316(d)(1)(B);
`
`37 C.F.R. § 42.121(a)(3) (“A reasonable number of substitute claims. A
`
`motion to amend may cancel a challenged claim or propose a reasonable
`
`number of substitute claims. The presumption is that only one substitute
`
`claim would be needed to replace each challenged claim, and it may be
`
`rebutted by a demonstration of need.”). Patent Owner also was reminded
`
`that the proposed amendment may not enlarge the scope of the claims of the
`
`patent or introduce new matter. See 35 U.S.C. § 316(d)(3).
`
`In response to a question from Patent Owner, the Panel confirmed that
`
`as of the time of the conference call, the Office had not issued any guidance
`
`in response to Aqua Products, Inc. v. Matal, No. 2015-1177, 2017 WL
`
`4399000 (Fed. Cir. Oct. 4, 2017).
`
`During the call, Patent Owner stated its understanding that it did not
`
`bear the burden of proving the patentability of proposed substitute claims in
`
`the motion to amend. We confirmed Patent Owner’s understanding.
`
`Patent Owner also sought clarification on the rule that new matter
`
`may not be added by an amendment. Patent Owner must show written
`
`description support in the original specification for each proposed substitute
`
`
`
`3
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`claim. See 37 C.F.R. § 42.121(b). Importantly, citation should be made to
`
`the original disclosure of the application, as filed, rather than to the patent as
`
`issued. Also, Patent Owner must show written description support for the
`
`entire proposed substitute claim and not just the features added by the
`
`amendment. This applies equally to independent claims and dependent
`
`claims, even if the only amendment to the dependent claims is in the
`
`identification of the claim from which it depends.
`
`Patent Owner further requested clarification on 37 C.F.R.
`
`§ 42.121(a)(2)(i), which states that “[a] motion to amend may be denied
`
`where . . . [t]he amendment does not respond to a ground of unpatentability
`
`involved in the trial.” There is no specific format for complying with this
`
`rule. In considering the motion, we will consider the entirety of the record
`
`to determine whether Patent Owner’s amendments respond to the two
`
`grounds of unpatentability involved in this trial, in compliance with
`
`37 C.F.R. § 42.121(a)(2)(i).
`
`In response to questions from Petitioner, we advised the parties that
`
`the page limit set forth in the rules (37 C.F.R. § 42.24(a)(vi)) still applies.
`
`Further, Petitioner may submit additional testimony and evidence with its
`
`opposition to the motion to amend.
`
`With regard to the page limits, we remind the parties that the motion
`
`to amend, as well as any opposition, is limited to twenty-five pages, Patent
`
`Owner’s reply is limited to twelve pages, and the required claim listing may
`
`be contained in an appendix, which does not count toward the page limit for
`
`the motion. See 37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3), (c)(3); 37 C.F.R.
`
`§ 42.121(b).
`
`
`
`4
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`
`In consideration of the foregoing, it is:
`
`ORDER
`
`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).
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`PETITIONER:
`
`Brian Ferguson
`Brian.ferguson@weil.com
`
`Anish Desai
`Anish.desai@weil.com
`
`Christopher Pepe
`Christopher.pepe@weil.com
`
`PATENT OWNER:
`
`Jennifer Bailey
`Jennifer.bailey@eriseip.com
`
`Adam Seitz
`Adam.seitz@eriseip.com
`
`
`
`
`
`6
`
`
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