Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 16
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` Entered: February 28, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Case IPR2017-01428
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`Conference Regarding Motion to Amend
`
`37 C.F.R. § 42.121
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
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`
`
`
`
`
`
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`Paper 16
`
`
`
` Entered: February 28, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Case IPR2017-01428
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`Conference Regarding Motion to Amend
`
`37 C.F.R. § 42.121
`
`
`
`
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`Patent Owner requested a 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. During a conference call with the parties on February 22,
`
`2018, the panel provided guidance consistent with this Order.
`
`I. Motion to Amend
`
`Congress provided an opportunity for a patent owner to file a
`
`motion to amend claims in an inter partes review. For example,
`
`35 U.S.C. § 316(d), as amended by the Leahy-Smith America Invents Act
`
`(Pub. L. 112-29, 125 Stat. 284 (2011)) (“AIA”), states:
`
`(d) Amendment of the Patent. –
`
`(1) IN GENERAL. – During an inter partes review
`instituted under this chapter, the patent owner may file 1 motion
`to amend the patent in 1 or more of the following ways:
`
`(A) Cancel any challenged patent claim.
`(B) For each challenged claim, propose a
`reasonable number of substitute claims.
`
`
`
`* * * *
`
`(3) SCOPE OF CLAIMS. – An amendment under this
`subsection may not enlarge the scope of the claims of the patent
`or introduce new matter.
`
`(emphasis added).
`
`Congress also gave the Director authority to set forth “standards and
`
`procedures” for moving to amend to cancel a challenged claim or propose a
`
`reasonable number of substitute claims. 35 U.S.C. § 316(a)(9). The
`
`resulting regulation for filing motions to amend claims in an inter partes
`
`review is 37 C.F.R. § 42.121.
`
`2
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`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`II. Regulatory Requirements for Motion to Amend
`
`Subsection (a) of 37 C.F.R. § 42.121 reiterates that a patent owner
`
`may file “one motion to amend” and adds that such filing may occur “only
`
`after conferring with the Board.” Rule 121 describes further the scope and
`
`content of the motion. Each is discussed below.
`
`In addition, subsection (a)(2) of 37 C.F.R. § 42.121 states:
`
`(2) Scope. A motion to amend may be denied where:
`
`(i) The amendment does not respond to a ground of
`unpatentability involved in the trial; or
`(ii) The amendment seeks to enlarge the scope of the
`claims of the patent or introduce new subject matter.
`
`An inter partes review is a focused proceeding, unlike ex parte patent
`
`prosecution or patent reexamination. For instance, a final determination
`
`must be issued not later than one year after the date on which the Director
`
`notices the institution of review, except that the Director, for good cause,
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`may extend the period by not more than six months. 35 U.S.C. § 316(a)(11);
`
`37 C.F.R. § 42.100(c). All portions of Part 42, Title 37, Code of Federal
`
`Regulations, are construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding, 37 C.F.R. § 42.1(b), including determining
`
`what constitutes a substitute claim for a challenged claim, what is deemed
`
`responsive to an alleged ground of unpatentability, and whether an
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`amendment seeks to enlarge the scope of claims.
`
`A. Reasonable Number of Substitute Claims
`
`The statute provides that, in a motion to amend, Patent Owner may
`
`cancel challenged claims and that for each challenged claim, Patent Owner
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`3
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`
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
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`may only propose a reasonable number of substitute claims. See 35 U.S.C.
`
`§ 316(d)(1)(B). Subsection (a)(3) of 37 C.F.R. § 42.121 reiterates this
`
`statutory provision, and then provides: “The presumption is that only one
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`substitute claim would be needed to replace each challenged claim, and it
`
`may be rebutted by a demonstration of need.” Therefore, to the extent
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`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.”).
`
`B. Contingent Motion to Amend
`
`A motion to amend claims 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.
`
`C. Responds to a Ground of Unpatentability Involved in the Trial
`
`We note that 37 C.F.R. § 42.121(a)(2)(i) 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
`
`4
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`
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
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`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 at least one ground of unpatentability involved in this trial, in
`
`compliance with 37 C.F.R. § 42.121(a)(2)(i).
`
`Generally, a motion to amend is not an opportunity to amend the
`
`claims in some other way, wholly unrelated to addressing unpatentability of
`
`the challenged claims. The broad language of 37 C.F.R. § 42.121(a)(2)(i),
`
`however, does not preclude proposed amendments that address potential
`
`35 U.S.C. § 101 or § 112 issues. Specifically, if a patent owner proposes
`
`amendments addressing the prior art in the trial, other proposed amendments
`
`may address potential § 101 or § 112 issues. Allowing an amendment in a
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`motion to amend under 37 C.F.R. § 42.121 to address potential 35 U.S.C.
`
`§ 101 or § 112 issues, when a given claim is being amended already in view
`
`of a 35 U.S.C. § 102 or § 103 ground, serves the public interest by ensuring
`
`issuance of valid and clear patents. See Final Written Decision, Veeam
`
`Software Corp. v. Veritas Techs., LLC, Case IPR2014-00090, slip op. at
`
`2629 (PTAB July 17, 2017) (Paper 48).
`
`D. Scope of the Claims
`
`The motion to amend must not present substitute claims that enlarge
`
`the scope of the pending claims or introduce new subject matter. 35 U.S.C.
`
`§ 316(d); 37 C.F.R. § 41.121(a)(2)(ii). Thus, the Board requires that the
`
`motion to amend set forth written description support of the subject patent
`
`for the substitute claims, and if priority is sought to the filing date of an
`
`earlier filed application, must set forth the written description support for the
`
`substitute claims in the earlier filed application. See 37 C.F.R. § 42.121(b).
`
`5
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`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 set forth written description support for the proposed substitute claim,
`
`as a whole, 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.
`
`E. Claim Listing
`
`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 that 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. See Veeam,
`
`IPR2014-00090, slip op. at 35; Final Written Decision, Cisco Sys., Inc. v.
`
`Focal IP, LLC, Case IPR2016-01254, slip op. at 9192 (PTAB Dec. 27,
`
`2017) (Paper 56).
`
`The claim listing is filed as an appendix, and shall not count toward
`
`the page limits for the motion to amend. The appendix, however, shall not
`
`contain any substantive briefing. All arguments and evidence in support of
`
`6
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`
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`the motion to amend shall be in the motion itself. See Cisco, IPR2016-
`
`01254, slip op. at 93.
`
`F. Burden of Persuasion
`
`With regard to Patent Owner’s burden in a motion to amend, the
`
`Federal Circuit’s Aqua Products decision instructs the Board to “assess[] the
`
`patentability of the proposed substitute claims without placing the burden of
`
`persuasion on the patent owner.” Aqua Products, Inc. v. Matal, 872 F.3d
`
`1290, 1328 (Fed. Cir 2017); see also Guidance on Motions to Amend in
`
`view of Aqua Products (“In light of the Aqua Products decision, the Board
`
`will not place the burden of persuasion on a patent owner with respect to the
`
`patentability of substitute claims presented in a motion to amend.”).1
`
`Consequently, the Board will determine whether substitute claims are
`
`unpatentable by a preponderance of the evidence based on the entirety of the
`
`record, including any opposition by Petitioner. See Guidance on Motions to
`
`Amend in view of Aqua Products, at 2.
`
`G. Duty of Candor and Other General Guidance
`
`Consistent with the above-referenced Guidance, issued by the Chief
`
`Judge of the Board, we note that the statutory and regulatory requirements
`
`for a motion to amend under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, as
`
`well as the duty of candor under 37 C.F.R. § 42.11, remain applicable.
`
`
`
`1 Memorandum from David P. Ruschke, Chief Administrative Patent Judge,
`to Patent Trial and Appeal Board, Guidance on Motions to Amend in view
`of Aqua Products (Nov. 21, 2017),
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf.
`
`7
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`Additional guidance concerning motions to amend is published in the Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67 (Aug. 14,
`
`2012).
`
`H. Default Page Limits and Deadlines
`
`The page limit set forth in the rules (37 C.F.R. § 42.24(a)(vi)) applies.
`
`The motion to amend, as well as any opposition, is limited to twenty-five
`
`pages. As stated above, the required claim listing may be contained in an
`
`appendix to the motion to amend, which does not count toward the page
`
`limit for the motion. Patent Owner’s reply is limited to twelve pages. See
`
`37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3), (c)(3); 37 C.F.R. § 42.121(b).
`
`Petitioner is authorized to submit additional testimony and evidence with its
`
`opposition to the motion to amend. Petitioner may request authorization to
`
`file a sur-reply, limited to twelve pages. As stated during the call, the panel
`
`is predisposed to authorize a sur-reply if Petitioner requests it.
`
`As discussed during the call with the parties, deadlines to submit any
`
`motion to amend, opposition, reply, or sur-reply may be stipulated by the
`
`parties, in accordance with the instructions provided in the Scheduling Order
`
`and by the panel during the call. The parties indicated that they were
`
`working toward a joint stipulation regarding upcoming deadlines and that
`
`the stipulated schedule would include a deadline for a potential sur-reply to
`
`the motion to amend.
`
`8
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`In consideration of the foregoing, it is:
`
`III. ORDER
`
`ORDERED that Patent Owner has satisfied the requirement of
`
`conferring with the Board prior to filing a motion to amend under 37 C.F.R.
`
`§ 42.121(a).
`
`
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`
`
`
`
`9
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`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`10
`
`
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