Trials@uspto.gov
`571-272-7822
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` Paper No. 9
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` Entered: June 1, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUIZ FOOD PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02016
`Patent 8,275,358 B1
`____________
`
`Before MEREDITH C. PETRAVICK, TREVOR M. JEFFERSON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Conference Regarding Motion to Amend
`37 C.F.R. § 42.121
`
`
`
`571-272-7822
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` Paper No. 9
`
`
` Entered: June 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUIZ FOOD PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02016
`Patent 8,275,358 B1
`____________
`
`Before MEREDITH C. PETRAVICK, TREVOR M. JEFFERSON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Conference Regarding Motion to Amend
`37 C.F.R. § 42.121
`
`
`
`
`IPR2017-02016
`Patent 8,275,358 B1
`
`
`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 June 1, 2018,
`the panel provided guidance consistent with this Order. See Western Digital
`Corp. v. SPEX Technologies, Inc., IPR2018-00082 (PTAB April 25, 2018)
`(Paper 13).
`
`I. MOTION TO AMEND
`Unless the parties stipulate otherwise, a motion to amend must be filed
`by DUE DATE 1 set forth in the Scheduling Order (Paper 8). As provided
`by Congress, patent owners are entitled to file a motion to amend in inter
`partes reviews. Specifically, 35 U.S.C. § 316(d) 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 authorized the Director 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). A regulation
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`directed to filing motions to amend claims in an inter partes review is 37
`C.F.R. § 42.121.
`
`A. 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. A patent owner should adopt a claim-by-claim
`approach to specifying the contingency of substitution, e.g., which claim for
`which claim and in what circumstance.
`
`B. Burden of Persuasion
`In October 2017, the U.S. Court of Appeals for the Federal Circuit
`issued an en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017) (“Aqua Products”), addressing the burden of persuasion that
`the Board applies when considering the patentability of substitute claims
`presented in a motion to amend. In November 2017, the Board issued a
`memorandum providing further guidance on motions to amend in view of
`that decision. See Memorandum “Guidance on Motions to Amend in view of
`Aqua Products” (Nov. 21, 2017) (“Board’s Memorandum”).1 Subsequent to
`the issuance of Aqua Products and the Board’s Memorandum, the Federal
`Circuit issued a decision in Bosch Automotive Service Solutions, LLC v.
`Matal, 878 F.3d 1027 (Fed. Cir. 2017) (“Bosch”), as well as a follow-up
`
`1 Memorandum, “Guidance on Motions to Amend in view of Aqua
`Products” (Nov. 21, 2017), (https://www.uspto.gov/sites/default/
`files/documents/guidance_on_motions_to_amend_11_2017.pdf)
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`Order amending that decision on rehearing. See Bosch Auto. Serv. Sols.,
`LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed.
`Cir. Mar. 15, 2018).
`In accordance with Aqua Products, the Board’s Memorandum, and
`Bosch, a patent owner does not bear the burden of persuasion to demonstrate
`the patentability of substitute claims presented in a motion to amend.
`Rather, as a result of the current state of the law and USPTO rules and
`guidance, the burden of persuasion will ordinarily lie with the petitioner to
`show that any proposed substitute claims are unpatentable by a
`preponderance of the evidence. The Board itself also may justify any
`finding of unpatentability by reference to evidence of record in the
`proceeding, as it must do when a petitioner ceases to participate, as further
`noted in Aqua Products and Bosch. Bosch, 878 F.3d at 1040 (citing Aqua
`Products, 872 F.3d at 1311 (O’Malley, J.)). Thus, the Board determines
`whether substitute claims are unpatentable by a preponderance of the
`evidence based on the entirety of the record, including any opposition made
`by the petitioner.
`Before considering the patentability of any substitute claims, however,
`the Board first must determine whether the motion to amend meets the
`statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37
`C.F.R. § 42.121. Those requirements and other guidance are discussed
`below.
`
`C. Reasonable Number of Substitute Claims
`By statute, in a motion to amend, a patent owner may cancel
`challenged claims or propose a reasonable number of substitute claims for
`each challenged claim. 35 U.S.C. § 316(d)(1)(B). There is a rebuttable
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`presumption that a reasonable number of substitute claims per challenged
`claim is one (1) substitute claim. 37 C.F.R. § 42.121(a)(3). A patent owner
`may rebut this presumption upon demonstration of a need to present more
`than one substitute claim per challenged claim. Id. (“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.”). Thus, to the extent a patent owner seeks to propose more than
`one substitute claim for each cancelled claim, the patent owner should
`explain in the motion to amend the need for the additional claims and why
`the number of proposed substitute claims is reasonable.
`The determination of whether the number of proposed substitute
`claims is reasonable is made on a claim-by-claim basis, consistent with the
`statutory language that refers to a reasonable number of substitute claims for
`“each” challenged claim. 35 U.S.C. § 316(d)(1)(B); 37 C.F.R.
`§ 42.121(a)(3). To help the Board determine whether a motion to amend
`meets the requirement, the motion should, for each proposed substitute
`claim, specifically identify the challenged claim that it is intended to replace.
`All proposed claims should be traceable to an original challenged claim as a
`proposed substitute claim for that challenged claim.
`
`D. Responds to a Ground of Unpatentability Involved in the Trial
`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 for
`complying with this rule. Thus, in considering the motion, we will consider
`the entirety of the record to determine whether Patent Owner’s amendments
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`respond to at least one ground of unpatentability involved in this trial, in
`compliance with 37 C.F.R. § 42.121(a)(2)(i).
`The rule does not require, however, that every word added to or
`removed from a claim in a motion to amend be solely for the purpose of
`overcoming an instituted ground. Additional modifications that address
`potential 35 U.S.C. § 101 or § 112 issues, for example, are not precluded by
`rule or statute. Thus, once a proposed claim includes amendments to
`address a prior art ground in the trial, a patent owner also may include
`additional limitations to address potential § 101 or § 112 issues, if necessary.
`Allowing an amendment to address such 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 helping to ensure the patentability of amended claims. See
`Veeam Software Corp. v. Veritas Techs., LLC, Case IPR2014-00090, slip op.
`at 26–29 (PTAB July 17, 2017) (Paper 48). In addition, allowing such
`amendments helps ensure a “just” resolution of the proceeding and fairness
`to all parties. 37 C.F.R. § 42.1(b).
`As stated in 35 U.S.C. § 316(d)(3), an “amendment . . . may not
`enlarge the scope of the claims of the patent.” See also 37 C.F.R.
`§ 42.121(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he
`amendment seeks to enlarge the scope of the claims of the patent.”). Thus, a
`patent owner may not seek to broaden a challenged claim in any respect, in
`the name of responding to an alleged ground of unpatentability. For
`example, a proposed substituted claim may not remove a feature of the
`claim, thus broadening it. Rather, a proper substitute claim under §
`42.121(a)(2)(i) must narrow the scope of the challenged claim it replaces in
`a way that is responsive to a ground of unpatentability involved in the trial.
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`For example, a proposed substitute claim adding a novel and nonobvious
`feature or combination to avoid the prior art in an instituted ground of
`unpatentability will narrow the scope of the claim.
`
`E. Scope of the Claims
`A motion to amend may not present substitute claims that enlarge the
`scope of the claims of the challenged patent or introduce new subject matter.
`35 U.S.C. § 316(d); 37 C.F.R. § 41.121(a)(2)(ii). New matter is any
`addition to the claims without support in the original disclosure. See
`TurboCare Div. of Demag Delaval Turbomach. v. Gen. Elec. Co., 264 F.3d
`1111, 1118 (Fed. Cir. 2001) (“When [an] applicant adds a claim . . . the new
`claim[] . . . must find support in the original specification.”). Normally, a
`claim element without support in the original disclosure (i.e., the application
`as originally filed) merits a rejection under 35 U.S.C. § 112 for lack of
`written description support. See, e.g., In re Rasmussen, 650 F.2d 1212, 1214
`(CCPA 1981) (“The proper basis for rejection of a claim amended to recite
`elements thought to be without support in the original disclosure, therefore,
`is § 112, first paragraph . . . .”). Thus, the Board requires that a motion to
`amend set forth written description support in the originally filed disclosure
`of the subject patent for each proposed substitute claim, and also set forth
`the support in an earlier-filed disclosure for each claim for which benefit of
`the filing date of the earlier filed disclosure is sought. See 37 C.F.R.
`§§ 42.121(b)(1), 42.121(b)(2). If a petitioner, in an opposition to a motion
`to amend, raises an issue of priority of a proposed substitute claim, for
`example, based on art identified in the opposition, the patent owner may
`respond in a reply to the opposition.
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`Importantly, to meet this requirement, citation should be made to the
`original disclosure of the application, as filed, rather than to the patent as
`issued. The motion to amend itself, not the claim listing (discussed below),
`must set forth the written description support. See MLB Advanced Media,
`L.P. v. Front Row Techs., LLC, Case IPR2017-01127, slip op. at 2˗4 (PTAB
`Jan. 16, 2018) (Paper 24). In addition, the motion must set forth written
`description support for each 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.
`
`F. 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 a patent owner intends as depending from a proposed
`substitute independent claim. For each proposed substitute claim, the
`motion must show clearly the changes in 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.
`The claim listing may be filed as an appendix to the motion to amend,
`and shall not count toward the page limit for the motion. The appendix,
`however, shall not contain any substantive briefing. All arguments and
`evidence in support of the motion to amend shall be in the motion itself.
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`G. Duty of Candor and Other General Guidance
`Under 37 C.F.R. § 42.11, all parties have a duty of candor, which
`includes a patent owner’s duty to disclose to the Board information of which
`the patent owner is aware that is material to the patentability of substitute
`claims, if such information is not already of record in the case. When
`considering the duty of candor in connection with a proposed amendment, a
`patent owner should consider each added limitation. Information about an
`added limitation may be material even if it does not include the rest of the
`claim limitations.
`Likewise, a petitioner should keep in mind that it has a duty of candor
`in relation to relevant information that is inconsistent with a position
`advanced by the petitioner during the proceeding. Cf. 37 C.F.R.
`§ 42.51(b)(iii). For example, such information could include objective
`evidence of non-obviousness of proposed substitute claims, if a petitioner is
`aware of such evidence and it is not already of record in the case.
`
`H. Default Page Limits
`The page limits set forth in the rules apply. A motion to amend, as well
`as any opposition to the motion, is limited to twenty-five pages. See 37
`C.F.R. §§ 42.24(a)(1)(vi), (b)(3). A patent owner’s reply is limited to twelve
`pages. See 37 C.F.R. § 42.24(c)(3). The parties may contact the Board to
`request additional pages or briefing.
`A petitioner may submit additional testimony and evidence with an
`opposition to the motion to amend, and a patent owner may do likewise with
`a reply. Deadlines to submit any motion to amend, opposition, reply, or
`additional briefing may be stipulated by the parties, to the extent permitted
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`by the instructions set forth in the Scheduling Order. As stated during the
`call, the panel is predisposed to authorize a sur-reply if Petitioner requests it.
`
`I. Other General Information Regarding Motions to Amend
`Additional information concerning motions to amend is published in
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67
`(Aug. 14, 2012).
`
`II. ORDER
`In consideration of the foregoing, it is:
`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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`IPR2017-02016
`Patent 8,275,358 B1
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`For PETITIONER:
`James P. Murphy
`Matthew Frontz
`Ryan Murphy
`POLSINELLI PC
`jmurphy@polsinelli.com
`mfrontz@polsinelli.com
`rmurphy@polsinelli.com
`
`For PATENT OWNER:
`Mark C. Johnson
`Luis A. Carrion
`RENNER OTTO
`mjohnson@rennerotto.com
`lcarrion@rennerotto.com
`
`
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