Paper: 27
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: November, 30 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`AVER INFORMATION INC. AND IPEVO, INC.,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02108
`Patent 8,508,751 B1
`____________
`
`
`
`Before JONI Y. CHANG, THOMAS L. GIANNETTI, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge BEAMER.
`
`Opinion Dissenting by Administrative Patent Judge CHANG.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`

`

`IPR2017-02108
`Patent 8,508,751 B1
`
`
`On September 15, 2017, Petitioner filed a Petition requesting an inter
`partes review of claims 1−5, 7−10, 12−14, 16, 18, and 20 (“the challenged
`original claims”) of U.S. Patent No. 8,508,751 B1. Paper 3, 1. A conference call
`was held between the panel and counsel for the parties on November 27, 2018.
`The panel requested the call to clarify whether Patent Owner’s Motion To
`Amend (Paper 12) (hereafter, “MTA”) is contingent or non-contingent. During
`the call, counsel for Patent Owner advised the panel that the motion is
`non-contingent. Indeed, Patent Owner’s Motion to Amend stated, as to the
`proposed substitute claims, “PO’s MTA is not contingent upon the originally
`issued claims being found unpatentable.” Paper 12, 1 (emphasis added). A
`“non-contingent” motion to amend means that the panel will not determine the
`patentability of the original substituted claims, which will be cancelled, and
`instead the panel will consider the merits of the motion to amend and, if the
`procedural requirements are met, provide a final written decision on the
`patentability of the substitute claims.
`There are two additional procedural issues that require immediate
`attention. First, Patent Owner’s MTA used one-and-a-half line spacing, in
`contravention of 37 C.F.R. §42.6(a)(2)(iii), which requires that “[d]ouble spacing
`must be used except in claim charts . . . .” Paper 17, 11. Petitioner asserts in its
`Opposition that the MTA would have been 27 pages long, even allowing the
`included claim charts to remain in their original form, thus exceeding the
`applicable 25-page limit provided in 37 C.F.R. §42.24(a)(1)(vi). Paper 17, 12.
`Accordingly, Petitioner submits the MTA should be denied on this ground alone.
`Id.
`
`Patent Owner’s Reply To Petitioner’s Opposition To Patent Owner’s
`Motion To Amend (hereafter, “Reply”) represents that the failure to comply with
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`IPR2017-02108
`Patent 8,508,751 B1
`
`the line spacing requirement was inadvertent, that the claim charts included in
`the brief could have been included in an appendix, which would not have been
`subject to the 25-page limit, and therefore a properly-spaced and arranged brief
`would have been in compliance with the page limit. 1 Paper 19, 1–2. Patent
`Owner argues Petitioner has not been prejudiced by this lapse, and in any event
`has failed to promptly raise the issue after becoming aware of it, and therefore
`Patent Owner’s “line spacing oversight may be excused.” Paper 19, 2–3.
`We agree that Petitioner should have brought up this issue in a more
`timely fashion, particularly in view of the fact that Petitioner sought and obtained
`a six-day extension to the due date of its opposition. Paper 15. Also, the claim
`support chart in the body of the motion does not appear to raise substantive
`issues requiring response from the Petitioner. Therefore, we will not deny the
`MTA based on the failure to comply with 37 C.F.R. §§ 42.6(a)(2)(iii) and
`§42.24(a)(1)(vi). In addition, as ordered below, Petitioner is authorized to
`submit a five-page sur-reply brief directed to the MTA.
`The second procedural issue requiring attention arises from Patent
`Owner’s attempt to further amend the proposed substitute claims in its Reply.
`Paper 19, 4. In the MTA, Patent Owner proposed to replace challenged original
`claims 1-3, 5, 8, 10, 12-14, and 16 with substitute claims 21-30, respectively.
`Paper 12, 1. In its Opposition, Petitioner pointed out inconsistencies arising
`from Patent Owner’s failure to amend the dependency relationships of the
`proposed substitute dependent claims, and failure to even propose a substitute
`claim for at least original dependent claim 4. Paper 17, 13–14. Accordingly, in
`
`
`1 However, the Western Digital guidelines state “The motion to amend itself, not
`the claim listing (discussed below), must set forth the written description support.”
`Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, slip op. at 8
`(PTAB April 25, 2018) (Paper 13).
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`IPR2017-02108
`Patent 8,508,751 B1
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`its Reply, Patent Owner sought to propose new substitute claims 21–37 in place
`of original claims 1–17. The new substitute claims add to the previous
`amendments by changing the dependencies of some dependent claims to refer to
`a substitute independent claim rather than an original independent claim. Paper
`19, App. A, B. 2
`There are two problems with this approach. First, the Reply would replace
`original claims 6, 11, 15, and 17 with substitute claims 26, 31, 35, and 37. Paper
`19, 16−18. However, original claims 6, 11, 15, and 17 are not subject to review
`because they were not challenged by Petitioner. Paper 3, 1. See 35 U.S.C. §
`316(d)(1)(B) (which only permits amendment to challenged claims). Therefore
`substitute claims 26, 31, 35, and 37, corresponding to those claims, will not be
`considered.
`The second problem is that Patent Owner did not follow the proper
`procedures for amending the claims a second time:
`Additional motion to amend. In addition to the requirements set
`forth in paragraphs (a) and (b) of this section, any additional motion to
`amend may not be filed without Board authorization. An additional
`motion to amend may be authorized when there is a good cause
`showing or a joint request of the petitioner and the patent owner to
`materially advance a settlement. In determining whether to authorize
`such an additional motion to amend, the Board will consider whether
`a petitioner has submitted supplemental information after the time
`period set for filing a motion to amend in paragraph (a)(1) of this
`section.
`37 C.F.R. § 42.121(c). Given that the Trial Hearing is scheduled for December
`13, 2018, and in the interest of expediting this proceeding, we will treat the
`pertinent portions of the Reply as a request for authorization pursuant to the rule.
`
`
`2 No substitute claims have been proposed for challenged original claims 18 and
`20. Paper 19, 18. Original claim 19 is not at issue. Paper 3, 1.
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`IPR2017-02108
`Patent 8,508,751 B1
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`As Petitioner has not raised any objections to Patent Owner’s attempt to further
`amend the claims, and given the pro forma nature of the additional amendments,
`we will proceed with new substitute claims 21–25, 27–30, 32–34, and 36 set forth
`in the Reply Appendices. Petitioner may address any issues raised by the new
`substitute claims in the sur-reply ordered below.
`Finally, the Trial Hearing Order is being modified to reflect the fact that
`Patent Owner’s MTA is not contingent.
`We have considered the points raised in the Dissent, but have determined
`that this Order best serves the goal of securing the just, speedy, and inexpensive
`resolution of this proceeding. 37 C.F.R. § 42.1.
`
`Therefore, it is
`ORDERED that Petitioner may file, by December 11, 2018, a five page
`sur-reply brief directed to the MTA; and
`FURTHER ORDERED that the November 21, 2018 Trial Hearing Order
`(Paper 24) is modified to read:
`Petitioner and Patent Owner each shall have 45 minutes of
`total time to present arguments. The hearing will proceed as
`follows. Petitioner will open the hearing by presenting its case
`regarding original challenged claims 18 and 20 and the proposed
`substitute claims 21–25, 27–30, 32–34, and 36 set forth in Paper
`19, Appendices A and B. Patent Owner then will respond to
`Petitioner’s presentation. Petitioner may reserve rebuttal time (of
`no more than half its total argument time) to reply to Patent
`Owner’s arguments. Patent Owner may reserve sur-rebuttal time
`(of no more than half its total argument time) to respond to
`Petitioner’s rebuttal.
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`IPR2017-02108
`Patent 8,508,751 B1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AVER INFORMATION INC. AND IPEVO, INC.,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02108
`Patent 8,508,751 B1
`____________
`
`
`
`Before JONI Y. CHANG, THOMAS L. GIANNETTI, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge, dissenting.
`
`I respectfully disagree with the Majority’s position to waive the rule
`
`requirements set forth in 37 C.F.R. §§ 42.6(a)(2)(iii), 42.23(b),
`42.24(a)(1)(vi), and 42.121(c). Patent Owner has not demonstrated that there
`is a good cause showing to excuse the improper Motion to Amend and Reply,
`including the submission of the second set of substitute claims.
`
`There is no dispute that Patent Owner’s Motion to Amend does not
`comply with the relevant rule requirements. Patent Owner admits that it
`“inadvertently submitted its Motion to Amend (‘MTA,’ Paper No. 12) with
`1.5X line spacing instead of double-line spacing as required by 37 C.F.R.
`[§ 42.6(a)(2)(iii)].” Reply 1. Patent Owner also concedes that it “could have
`easily double spaced its MTA after submission.” Id. Yet Patent Owner has
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`IPR2017-02108
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`Patent 8,508,751 B1
`never sought authorization to submit a corrected Motion to Amend, or took
`other reasonable steps to remedy the improper filing.
`
`In addition, Patent Owner does not dispute that its Motion would have
`exceeded the 25-page limit under § 42.24(a)(1)(vi), if the Motion were filed
`with double-line spacing in compliance with § 42.6(a)(2)(ii). See generally
`Reply. Nor does Patent Owner provide an explanation why it did not seek
`authorization for extending the page limit. Id. Rather, Patent Owner argues
`that “[t]he claim charts could have been submitted via an appendix, which
`would not count against the page limit.” Id. at 1−3.
`However, that argument does not amount to a good cause showing as to
`why the rule requirements set forth in §§ 42.6(a)(2)(ii) and 42.24(a)(1)(vi)
`should be waived. In fact, Patent Owner already submitted the claim charts in
`the Motion, itself, setting forth the written description support in the original
`disclosure of the patent for each substitute claim, as well as a claim listing in
`the Appendix, showing the changes to each claim. Paper 12, 4−12, App. A.
`Significantly, Patent Owner’s argument ignores the rule requirement
`under § 42.121(b), which “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.” See Western Digital Corp. v. SPEX Techs.,
`Inc., Case IPR2018-00082 (PTAB Apr. 25, 2018) (Paper 13) (informative),
`slip op. at 7. “The motion to amend itself, not the claim listing . . . , must set
`forth the written description support.” Id. at 8. Although “the claim listing
`may be filed as an appendix,” “[t]he appendix . . . shall not contain any
`substantive briefing” and “[a]ll arguments and evidence in support of the
`motion to amend shall be in the motion itself.” Id.
`Furthermore, in its Reply, Patent Owner submits a second set of
`substitute claims, proposing for the first time to (1) replace claims 6, 11, 15,
`and 17, which are not challenged in this proceeding, with substitute claims 26,
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`IPR2017-02108
`Patent 8,508,751 B1
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`31, 35, and 37; and (2) replace claims 4, 7, and 9 with substitute claims 24, 27,
`and 29. Paper 19, 16−18, App. A, App. B. Patent Owner’s Reply is improper
`because the second set of substitute claims raises new issues.
`Under 37 C.F.R. § 42.23, a “reply may only respond to arguments
`raised in the corresponding opposition.” Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). “[A] reply that raises a new
`issue . . . will not be considered,” and “[t]he Board will not attempt to sort
`proper from improper portions of the reply.” Id. Therefore, Patent Owner’s
`Reply should not be considered. See Intelligent Bio-Systems, Inc. v. Illumina
`Cambridge Ltd., 821 F.3d 1359, 1369−70 (Fed. Cir. 2016) (holding that the
`Board did not err in refusing the reply as improper under 37 C.F.R. § 42.23(b)
`because the reply raised new issue); Trial Practice Guide August 2018
`Update3, pp. 14−15.
`More importantly, Patent Owner’s second set of substitute claims fails
`to comply with the statutory provisions under 35 U.S.C. §§ 316(d)(1) and
`316(d)(2). 4 In particular, Patent Owner proposes to replace non-challenged
`claims 6, 11, 15, and 17, ignoring 35 U.S.C. § 316(d)(1)(B), which only
`permits amendment to challenged claims. Moreover, under § 42.121(c), “any
`additional motion to amend may not be filed without Board authorization” and
`“[a]n additional motion to amend may be authorized when there is a good
`cause showing.” Patent Owner did not request prior authorization to file a
`
`3 available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_G
`uide.pdf.
`4 Section 316(d)(1) provides that “[d]uring an inter partes review instituted
`under this chapter, the patent owner may file 1 motion to amend the patent . . .
`(B) [f]or each challenged claim, propose a reasonable number of substitute
`claims.” Emphases added. Section 316(d)(2) provides that “[a]dditional
`motions to amend may be permitted . . . by regulations prescribed by the
`Director.”
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`IPR2017-02108
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`Patent 8,508,751 B1
`second motion to amend or provided a good cause showing in compliance
`with § 42.121(c).
`For the foregoing reasons, I respectfully disagree with the Majority’s
`position to waive the rule requirements set forth in §§ 42.6(a)(2)(iii), 42.23(b),
`42.24(a)(1)(vi), and 42.121(c).
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`IPR2017-02108
`Patent 8,508,751 B1
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`PETITIONER
`
`Jackson Ho
`Jackson.ho@klgates.com
`
`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
`
`Kevin McCormick
`Kevin.mccormick@klgates.com
`K&L Gates LLP
`
`PATENT OWNER
`
`Trevor Coddington
`trevorcoddington@sandiegoiplaw.com
`
`Donny K. Samporna
`donnysamporna@sandiegoiplaw.com
`San Diego IP Law Group LLP
`
`
`
`1
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`