Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 12
`
`
` Entered: November 14, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`Case IPR2019-00714 (Patent 8,825,084 B2)
`Case IPR2019-00715 (Patent 8,326,327 B2)
`____________
`
`Before MICHAEL R. ZECHER, MIRIAL L. QUINN, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges. 1
`
`QUINN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`1 Administrative Patent Judges Quinn, Zecher, and Weinschenk are paneled
`on IPR2019-00714, whereas Administrative Patent Judges Aaron W. Moore,
`Zecher, and Quinn are paneled on IPR2019-00715.
`
`
`571-272-7822
`
`
`
`Paper 12
`
`
` Entered: November 14, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`Case IPR2019-00714 (Patent 8,825,084 B2)
`Case IPR2019-00715 (Patent 8,326,327 B2)
`____________
`
`Before MICHAEL R. ZECHER, MIRIAL L. QUINN, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges. 1
`
`QUINN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`1 Administrative Patent Judges Quinn, Zecher, and Weinschenk are paneled
`on IPR2019-00714, whereas Administrative Patent Judges Aaron W. Moore,
`Zecher, and Quinn are paneled on IPR2019-00715.
`
`
`
`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`
`
`I. DISCUSSION
`A conference call in this proceeding was held on November 13, 2019,
`among respective counsel for Petitioner, Patent Owner, and Judges Zecher,
`Quinn, and Weinschenk. The call was requested by Patent Owner,
`Blackberry Limited (“Blackberry”), to satisfy the requirement of 37 C.F.R.
`§ 42.121(a) to confer with us before filing a motion to amend.
`Patent Owner’s counsel indicated familiarity with the Board’s
`procedures, the requirements for the Motion to Amend under the New Pilot
`Program, and the various options under the Pilot. Neither party had any
`questions.
`To memorialize the guidance that we give parties under these
`circumstances, the parties are directed to Aqua Products, Inc. v. Matal, 872
`F.3d 1290 (Fed. Cir. 2017); the Memorandum re: Guidance on Motions to
`Amend in view of Aqua Products (Nov. 21, 2017) (available at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf); Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129
`Paper 15, and IPR2018-01130, Paper 14 (PTAB Feb. 25, 2019) (discussing
`Information and Guidance on Motions to Amend) (precedential); and
`Amazon.com Inc. v. Uniloc Luxembourg, S.A., IPR2017-00948, Paper 34
`(PTAB Jan. 18, 2019) (clarifying that a ground based on 35 U.S.C. § 101
`can be raised against proposed substitute claims) (precedential). Additional
`information concerning motions to amend under the pilot program is
`provided in the Notice Regarding a New Pilot Program Concerning Motion
`to Amend Practice and Procedures in Trial Proceedings under the America
`Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497
`
`
`
`2
`
`
`
`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`(Mar. 15, 2019) (“MTA Pilot Program Notice”). We also provide the
`following guidance.
`A. Requirements of a Motion to Amend
`Pursuant to 37 C.F.R. § 42.121(a)(2)(i), “[a] motion to amend may be
`denied where . . . [t]he amendment does not respond to a ground of
`unpatentability involved in the trial.” The motion to amend also may be
`denied if “[t]he 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)(ii).
`A claim listing, reproducing each proposed substitute claim, is
`required. 37 C.F.R. § 42.121(b). 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. See 37 C.F.R. §§ 42.24(a)(1), 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 that Blackberry proposes as dependent
`from a proposed substitute independent claim. For each proposed substitute
`claim, the motion should identify specifically the original claim that it is
`intended to replace and show clearly the changes of the proposed substitute
`claim with respect to the original claim.
`Blackberry may only propose a reasonable number of substitute
`claims. 35 U.S.C. § 316(d)(1)(B). To the extent Blackberry seeks to
`propose more than one substitute claim for an original claim, Blackberry
`shall explain in the motion to amend the need for the additional claims and
`why the number of proposed substitute claims is reasonable. See 35 U.S.C.
`§ 316(d)(1)(B); 37 C.F.R. § 42.121(a)(3).
`
`
`
`3
`
`
`
`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`
`Finally, Blackberry must show sufficient written description support
`in the original specification for each proposed substitute claim. 37 C.F.R.
`§ 42.121(b)(1). Citation should be made to the original disclosure of the
`application, as filed, rather than to the patent, as issued. Also, Blackberry
`must show sufficient written description support for the entire proposed
`substitute claim 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. Also, the motion to amend itself, not the claim listing,
`must set forth the written description support.
`B. Pilot Program Considerations
`The guidance in this section is taken from the MTA Pilot Program
`Notice.
`
`1. Requirement for a Request for Preliminary Guidance
`If Blackberry wishes to receive preliminary guidance from us on the
`initial motion to amend, it must include an explicit request for such
`preliminary guidance in its motion to amend filed on DUE DATE 1. We
`will not issue preliminary guidance unless a request is included in
`Blackberry’s initial motion to amend.
`2. Board’s Preliminary Guidance
`Generally, we will provide preliminary, nonbinding guidance on
`Blackberry’s initial motion to amend approximately four weeks after the due
`date for the opposition to the motion to amend. Our preliminary guidance
`will focus on the limitations added in Blackberry’s initial motion to amend
`and will not address the patentability of the originally challenged claims.
`The preliminary guidance will provide an initial discussion about whether
`
`
`
`4
`
`
`
`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`there is a reasonable likelihood that the motion to amend meets statutory and
`regulatory requirements for a motion to amend. The preliminary guidance
`also will provide an initial discussion about whether Petitioner (or the record
`then before the Office, including any opposition to the MTA and
`accompanying evidence) establishes a reasonable likelihood that the newly
`proposed substitute claims are unpatentable.
`3. Blackberry’s Options Under Pilot Program
`Under the pilot program, after receiving the opposition to the motion
`to amend and/or our preliminary guidance (if requested), Blackberry has
`four options.
`Under the first option, Blackberry may file a reply to the opposition to
`MTA and/or the preliminary guidance (if requested). This reply is due by
`DUE DATE 3. The reply may include new evidence, including declarations.
`Under this first option, the current Scheduling Order will remain in effect.
`Thus, Petitioner may file a sur-reply in response to Blackberry’s Reply.
`This sur-reply is due by DUE DATE 5. Generally, a reply or sur-reply may
`only respond to arguments raised in the preceding brief. Trial Practice
`Guide August 2018 Update, 15 (available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf). A petitioner’s sur-reply may not be accompanied by new
`evidence other than deposition transcripts of the cross-examination of any
`reply witness. Id. at 14. A petitioner’s sur-reply should only respond to
`arguments made in a reply, comment on reply declaration testimony, or
`point to cross-examination testimony. Id.
`Under the second option, Blackberry may file a revised motion to
`amend. This revised motion is due by DUE DATE 3. The revised motion to
`
`
`
`5
`
`
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`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`amend must provide amendments, arguments, and/or evidence in a manner
`that is responsive to the issues raised in the preliminary guidance (if
`requested) and/or Petitioner’s opposition to the initial motion to amend. The
`revised motion to amend may not include amendments, arguments, and/or
`evidence unrelated to issues raised in the preliminary guidance and/or
`Petitioner’s opposition to the initial motion to amend.
`The revised motion may include one or more newly proposed
`substitute claims in lieu of previously presented substitute claims.
`Blackberry cannot make the claims proposed in the revised motion to amend
`contingent on the unpatentability of the claims proposed in the original
`motion to amend. The revised motion to amend also may include substitute
`claims, arguments, or evidence previously presented in the original motion
`to amend, but may not incorporate any material by reference from the
`original motion to amend. The revised motion to amend also may provide
`new arguments and/or evidence as to why the revised motion to amend
`meets statutory and regulatory requirements for a motion to amend and may
`provide arguments and evidence relevant to the patentability of the pending
`substitute claims. Shortly after Blackberry files a revised motion to amend,
`we will issue a revised scheduling order to adjust the schedule, typically
`along the timeline shown in Appendix 1B of the MTA Pilot Program Notice.
`Under the third option, Blackberry may take no action (i.e., file no
`reply or revised motion to amend). Under this third option, if we have not
`issued preliminary guidance, then no further briefing is authorized. If,
`however, we have issued preliminary guidance, then Petitioner may file a
`reply in accordance with the Scheduling Order no later than three weeks
`after DUE DATE 3. See Paper 10, 5. The reply may only respond to the
`
`
`
`6
`
`
`
`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`preliminary guidance. No new evidence may accompany the reply in this
`situation. Blackberry may file a sur-reply in response to Petitioner’s reply to
`our preliminary guidance no later than three weeks after Petitioner’s reply.
`The sur-reply may only respond to arguments made in the reply. No new
`evidence may accompany the sur-reply in this situation.
`Under the fourth option, Blackberry may withdraw its initial motion
`to amend. Under this fourth option, we will not address the initial motion to
`amend in the final written decision.
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby ORDERED that
`Blackberry has satisfied the conference requirement of 37 C.F.R.
`§ 42.121(a).
`
`
`
`
`7
`
`
`
`IPR2019-00714 (Patent 8,825,084 B2)
`IPR2019-00715 (Patent 8,326,327 B2)
`
`For PETITIONER:
`
`Yar Chaikovsk
`David Okano
`PAUL HASTINGS LLP
`yarchaikovsky@paulhastings.com
`davidokano@paulhastings.com
`
`
`For PATENT OWNER:
`
`Michale T. Hawkins
`Nicholas Stephens
`Kenneth W. Darby
`Craig A. Deutsch
`Kim H. Leung
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`kdarby@fr.com
`deutsch@fr.com
`leung@fr.com
`
`Ognijen Zivojnovic
`Sam Stake
`Alex Wolinsky
`James M. Glass
`QUINN EMANUEL URQHART, & SULLIVAN, LLP
`ogizivojnovic@quinnemanuel.com
`samstake@quinnemanuel.com
`alexworlinsky@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`
`
`
`
`8
`
`
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