Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 35
`
`Date Entered: March 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2018-00952
`Patent 9,253,239 B2
`____________
`
`
`
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`SUMMARY OF CONFERNCE CONERNING PROPOSED MOTION TO AMEND
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`571-272-7822
`
`
` Paper No. 35
`
`Date Entered: March 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2018-00952
`Patent 9,253,239 B2
`____________
`
`
`
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`SUMMARY OF CONFERNCE CONERNING PROPOSED MOTION TO AMEND
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`Case IPR2018-00952
`Patent 9,253,239 B2
`
`
`In response to a request by Bradium Technologies LLC (“Patent Owner”),
`on March 6, 2019 we conducted a conference concerning Patent Owner’s option of
`filing a motion to amend U.S. Patent No. 9,253,239 B2, which is the subject of this
`proceeding. Michael Shanahan participated in the conference on behalf of Patent
`Owner, and David Cavanaugh participated in the conference on behalf of United
`Patents Inc. (“Petitioner”). Judges McNamara, Moore, and Chung also
`participated. During the conference, the following matters were discussed.
`A motion to amend the patent in an inter partes review is not itself an
`amendment. Unlike an amendment in patent prosecution, amendments proposed
`by a motion to amend are not entered as a matter of right. In an inter partes review
`a patent owner may cancel a challenged claim or propose a reasonable number of
`substitute claims. 35 U.S.C. § 316(d), 37 C.F.R. § 42.121(a)(3). There is no
`provision for amending an existing claim.
`There is a rebuttable presumption that only one substitute claim is needed to
`replace each challenged claim. 37 C.F.R. § 42.121(a)(3). Absent special
`circumstances, a challenged claim can be replaced by only one claim, and a motion
`to amend should identify specifically, for each proposed substitute claim, the
`challenged claim that it is intended to replace. See, ZTE Corp. v. ContentGuard
`Holdings, IPR2013-00136, Paper 33 (November 7, 2013). A proposed claim
`should be traceable to an original, challenged claim as a proposed substitute claim
`for the challenged claim.
`A desire to obtain a new set of claims having a hierarchy of different scope
`typically would not constitute sufficient special circumstances because an inter
`partes review is an adjudicatory proceeding, rather than an examination. See,
`Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). Replacing a
`claim with a substitute claim does not change claims depending from the claim that
`
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`Case IPR2018-00952
`Patent 9,253,239 B2
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`is the subject of the substitution. For example, if the movant proposes a substitute
`for claim 1, those claims which depend from claim 1 continue to depend from
`claim 1 as originally written. They do not incorporate the language of the
`substitute claim. If Patent Owner desires to remodel its claim structure according
`to a different strategy, it may consider pursuing another type of proceeding before
`the Office.
`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. 37 C.F.R. § 42.121(a)(2). Thus, a substitute claim cannot be broader than
`the broadest original patent claim and cannot remove a limitation from its
`corresponding original claim. Such a claim would not be responsive to the
`grounds of alleged unpatentbility. These conditions are evaluated for each
`substitute claim traceable to a challenged claim that the substitute claim is intended
`to replace. A proper substitute claim under 37 C.F.R, § 42.121(a)(2) must only
`narrow the scope of the challenged claim it replaces and may not enlarge the scope
`of the challenged claim by eliminating any feature or limitation. A proposed
`substitute claim is not responsive to an alleged ground of patentability if it does not
`either include or narrow each feature or limitation of the challenged claim being
`replaced
`Although we do not place the burden of persuasion on the Patent Owner, in
`evaluating the patentability of proposed substitute claims we consider the entire
`IPR record. Aqua Products v. Matal, 872 F.3d. 1290, 1326–27 (Fed. Cir. 2017).
`See also, Western Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00082,
`slip op. at 4 (PTAB Apr. 25, 2018) (Paper 13) (Informative). To that end, Patent
`Owner should identify specifically the feature(s) or limitation(s) added to each
`
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`Case IPR2018-00952
`Patent 9,253,239 B2
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`substitute claim, as compared to the challenged claim it replaces, and discuss
`technical facts and reasoning about those feature(s) or limitation(s), including the
`construction of new claim terms.
`The prior art of record refers to (a) any material prior art in the prosecution
`history of the patent, (b) any material prior art of record in the current proceeding,
`including art asserted in grounds on which the Board did not institute review; and
`(c) any material art of record in any other proceeding before the Office involving
`the patent. MasterImage 3D, Inc. and MasterImage 3D Asia LLC, v. RealD Inc.,
`Case IPR2015-00040, slip op. at 2 (PTAB July 15, 2015). The “prior art known to
`the patent owner” is no more that the material prior art that the Patent Owner
`makes of record in the current proceeding pursuant to its duty of candor and good
`faith to the Office under 37 C.F.R. § 42.11, in light of the Motion to Amend. Id. at
`3.
`
`Our current practice is to consider a proposed substitute claim after the
`corresponding patent claim is determined unpatentable. Thus, Patent Owner’s
`addition of a limitation to render the claim as a whole patentable places the initial
`focus on the added limitation. When considering the duty of candor and good faith
`under 37 C.F.R. § 42.11, Patent Owner should recognize that information about the
`added limitation can be material even if the information does not include all of the
`rest of the claim limitations. Id. (citing VMWare, Inc. v. Clouding Corp., Case
`IPR2014-01292, slip op. at 2 (PTAB Apr. 7, 2015) (Paper 23), concerning a Patent
`Owner’s duty to disclose not just the closet primary reference, but also the closest
`secondary references the teachings of which sufficiently complement those of the
`closest primary reference to be material).
`Arguments supporting patentable distinction may rely on the declaration
`testimony of a technical expert about the level of ordinary skill in the art and about
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`Case IPR2018-00952
`Patent 9,253,239 B2
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`the significance and usefulness of feature(s) or limitation(s) added by the proposed
`claim.
`A mere conclusory statement by counsel in the motion to amend that one or
`more added features or limitations are not described in any prior art or would not
`have been suggested or rendered obvious by the prior art is facially inadequate. Id.
`It also is insufficient for the movant simply to explain why the proposed substitute
`claims are patentable in consideration of the challenges on which the Board
`instituted review. Limiting the discussion either to the references already in the
`proceeding, or to the narrow combination specifically recited in the claim, does not
`provide a meaningful analysis. See, Corning Gilbert, Inc. v. PPC Broadband, Inc.,
`IPR2013-00347, Paper No. 20 (January 2, 2014).
`In explaining why it believes the claimed subject matter is patentable, the
`movant must address issues of nonobviousness, meaningfully. Although the
`choice of how to approach the discussion of patentability of the substitute claims is
`one for the movant, a narrative form may be useful. The movant should discuss
`the level of ordinary skill in the art, explaining the basic knowledge and skill set
`already possessed by one of ordinary skill in the art, especially with respect to the
`particular feature(s) or limitation(s) that the movant has added to the original
`patent claims. The movant should identify in what context the added feature or
`limitation, or something close to it, was already known, albeit not in the specific
`combination recited in the claims at issue. Id.
`A motion to amend must include a claim listing, which claim listing may be
`contained in an Appendix to the motion. 37 C.F.R. §42.121(b). A motion to
`amend claims must clearly identify the written description support for the proposed
`substitute claims. The written description test is whether the original disclosure of
`the application relied upon reasonably conveys to a person of ordinary skill in the
`
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`Case IPR2018-00952
`Patent 9,253,239 B2
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`art that the inventor had possession of the claimed subject matter as of the filing
`date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc). Pursuant to 37 C.F.R. § 42.121(b)(1), Patent Owner must set forth the
`support in the original disclosure of the patent for each proposed substitute claim,
`i.e., Patent Owner must identify clearly the written description support in the
`disclosure corresponding to the earliest date upon which Patent Owner seeks to
`rely. 37 C.F.R. § 42.121(b)(2).
`Merely indicating where each claim limitation individually is described in
`the original disclosure may be insufficient to demonstrate support for the claimed
`subject matter as a whole. While the proposed substitute claims need not be
`described verbatim in the original disclosure in order to satisfy the written
`description requirement, if the claim language does not appear in the same words
`in the original disclosure, a mere citation to the original disclosure, without any
`explanation as to why a person of ordinary skill in the art would have recognized
`that the inventor possessed the claimed subject matter as a whole, may be
`inadequate. See, Nichia Corporation v. Emcore Corporation, IPR2012-00005,
`Paper No. 27 (June 3, 2013).
`In preparing its motion to amend, the Board recommends that Patent Owner
`review the guidance provided by the Board in the proceedings cited in this paper.
`An example of a successful motion to amend can be found in Riverbed
`Technology, Inc. v. Silver Peak Systems, Inc., Case IPR2013-00402. (PTAB Dec.
`30, 2014)(Paper 35, Final Written Decision).
`In its opposition, Petitioner may explain why the proposed substitute claims
`are not patentable by addressing Patent Owner’s evidence and arguments and/or by
`identifying and applying additional prior art against proposed substitute claims.
`Patent Owner has an opportunity to respond in its reply to Petitioner’s opposition.
`
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`Case IPR2018-00952
`Patent 9,253,239 B2
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`The parties should request a conference if any further questions need to be
`addressed.
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`Case IPR2018-00952
`Patent 9,253,239 B2
`
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`
`
`
`PETITIONER:
`Jonathan Stroud
`Roshan Mansinghani
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`David Cavanaugh
`Dan Williams
`Jonathan Robe
`david.cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`jonathan.robe@wilmerhale.com
`
`PATENT OWNER:
`Chris Coulson
`ccoulson@kenyon.com
`
`Michael N. Zachary
`mzachary@bdiplaw.com
`
`Michael E. Shanahan
`mshanahan@generalpatent.com
`
`
`
`
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