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