Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 9
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Recent Activity at PTAB
· Other PTAB Matters
As of this writing, the PTAB has instituted or terminated 135 of the 362 listed proceedings. The PTAB has refused to institute 11 proceedings, the latest denial occurring in Norman Noble Inc. v. Nutech Ventures, IPR2013-00101, on June 20, 2013. Seven proceedings have been terminated by settlement, with two of those coming in June, Samsung Electronics Co. Ltd. v. Varia Holdings, LLC, IPR2013-00190 on June 12, 2013, and Dell Inc. v NovelPoint Security LLC, IPR2013-00202 on June 14, 2013, both before a decision on the petition requesting an IPR proceeding. One proceeding was dismissed. In all, trial is ongoing in 116 proceedings.
Recent Activity at the PTAB
First PTAB Final Decision under an AIA Post-Grant Review Proceeding: PTAB Applies Broadest Reasonable Interpretation Standard of Claim Construction to New AIA Reviews
On June 11, 2013, in an opinion authored by Judge Tierney for a panel including Judges Medley and Elluru, the PTAB decided Versata Software Inc. v. SAP America Inc., CMB2012-00001, Paper 70, applying the Broadest Reasonable Interpretation (hereinafter “BRI”) standard for claim construction, pursuant to 37 C.F.R. § 42.300(b), and not the method of claim construction used by the district courts.
Versata contended that the Office, in promulgating 37 C.F.R. § 42.300(b), exceeded its rulemaking authority provided for in 35 U.S.C. § 2(b)(2) and that stare decisis required the Board to apply the district court’s claim construction. The PTAB disagreed, and supported the Office’s promulgation of the rules.
Prior to the AIA, the Federal Circuit had held that “a Patent Office rule must be ‘procedural’.” Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335 (Fed. Cir. 2008). However, in establishing the new AIA proceedings
the Office was required to promulgate rules setting forth the standards to institute a review, as well as standards and procedures for discovery and motions to amend claims. 35 U.S.C. § 326(a)(2), (5), and (9). Thus, the plain language of the AIA statutes provides the Office with authority exceeding that of merely setting forth “procedures.” [slip op at 14]
The panel concluded from the “plain language of the AIA” that “Congress has granted the Office new and expanded rulemaking authority to ensure the success of the new reviews.” Id.
Applying the BRI, the panel concluded that the challenged claims were unpatentable under 35 U.S.C. § 101 as directed to an unpatentable abstract idea.
PTAB Institutes IPRs and Orders Joinder with Already Pending Proceedings
The PTAB issued sets of orders addressing (1) joinder of different parties challenging the same patent and (2) joinder of challenges involving the same parties, actions that in other PTO proceedings have gone by terms such as merger or consolidation.
In pairs of similar Orders entered June 20, 2013, a PTAB panel (Boalick, Bryan Moore, and McNamara) (1) granted the requests of petitioner Motorola Mobility LLC for inter partes review of a patent owned by SoftView, LLC, already the subject of a pair of petitions by Kyocera Corp., and (2) ordered joinder of the Motorola Mobility and Kyocera proceedings. See Motorola Mobility LLC. v. SoftView LLC, IPR2013-00256, Paper Nos. 9 and 10, and Motorola Mobility LLC. v. SoftView LLC, IPR2013-00257, Paper Nos. 9 and 10. The later proceedings were initiated on the same grounds and rejections as the earlier Kyocera proceedings, IPR2013-00007 and -00004, respectively. The motions for joinder were opposed by both SoftView and Kyocera. SoftView expressed concern that Motorola Mobility is acting on behalf of Apple Corp., which had originally sought joinder but later bowed out. Kyocera questioned the possible estoppel effect on Motorola’s existing inter partes reexaminations which are stayed during the pendency of the Kyocera IPR2013-00004 and -00007. The panel found neither concern an impediment to the joinder.
On June 28, another PTAB panel (Turner, Arbes and Arpin) issued a combined order of institution and joinder in LaRose Industries, LLC. v. Capriola Corp., IPR2013-00121, joining the proceeding with -00120, ordered the same date.
PTAB Authorizes Motion To Amend Patent Claims
In Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (Paper No. 26, entered June 11, 2013), Judge Lee, writing for an expanded panel also including Judges Tierney, Boalick, Chang, Giannetti and Fitzpatrick, discussed the PTAB’s requirements for a motion to amend.
Bergstrom filed a Motion to Amend on April 30, 2013, without having conferred with the Board about the specific amendments contemplated, in violation of 37 C.F.R. § 42.121(a). Because the Motion to Amend was not filed in compliance with 37 C.F.R. § 42.121(a), the Board dismissed the motion.
During a conference call discussion among the parties to the proceeding and the three APJs assigned to the proceeding, counsel for patent owner Bergstrom conceded that claims 1-4, 8, 10, and 17-19 are unpatentable on the grounds instituted for those claims. The Board indicated it would cancel claims 1-4, 8, 10, and 17-19, based on the concession of unpatentability by Bergstrom.
Thereafter, the Board provided a general discussion of what it considered important requirements for a patent owner’s motion to amend claims, as well as a brief discussion of how Bergstrom’s Motion to Amend fails to satisfy many of the requirements.
First, the analysis must be on a claim-by-claim basis to demonstrate that the proposed amendments do not violate the scope requirements of the rules.
Although Congress provided an opportunity for a patent owner to file a motion to amend claims in an inter partes review, it “did not intend that opportunity to be unfettered.” Slip op at 3. The resulting regulation for filing motions to amend claims in an inter partes review is 37 C.F.R. § 42.121, subsection (a)(3) of which states that a motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims, adding, “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.”
Moreover, § 42.121(a)(2) provides that 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 patent or introduce new subject matter.
“In the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace. . . . The determination is made on a claim-by-claim basis, consistent with 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).” Id. at 5.
Moreover, with regard to the requirements of 37 C.F.R. § 42.121(a)(2)(i), the proposed substitute claim may not broaden the challenged claim in any respect. Thus, the new claim must either narrow or include all features of the challenged claim.
Second, patentable distinctness is required. The Board indicated that the patent owner must make a showing a patentable distinction over the art in all cases for each proposed substitute claim. Further, the patent owner must, in certain circumstances, “make a showing of patentable distinction over all other proposed substitute claims for the same challenged claim” and may also be required to show patentable distinction over a substitute claim for another challenged claim.
The showing includes identifying the feature(s) added to each substitute claim, as compared to the challenged claim it replaces, and technical facts about the features that persuade the Board that the substitute claim is “is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Importantly, the Board noted that “[t]he burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.
The Board expects the patent owner to make “some representation … about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims.” The patent owner may rely upon expert declaration testimony to establish patentable distinctness and the level of skill in the art and the petition may also rely on evidence to rebut the patent owner’s position.
The PTAB also pointed out that the motion to amend may be denied if the substitute claims introduce new matter. Further, the PTAB cautioned that the patent owner must clearly indicate which claim the proposed substitute claim is intended to replace and must “show a special need to justify more than one substitute claim for each challenged claim.” The patent owner must show “patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.” Absent such a showing, the Board may deny entry of the additional claim or the claim may be grouped with other claims.
The Board explained that, when presenting dependent claims, it is important to provide some justification for why the features are being added or the proposed substitute claims may be denied entry as not responsive to an alleged ground of unpatentability. The Board explained that: “Adding features for no meaningful reason is generally inconsistent with proposing a reasonable number of substitute claims, and also not responsive to an alleged ground of unpatentability. Any such proposed substitute claim may be denied entry by the Board. See 37 C.F.R. §§ 42.121(a)(2) and (a)(3). [Id. at 6- 10.]
Third, the patent owner must clearly state the contingency of substitution because “an amendment can only cancel or substitute claims.” The PTAB explained that “[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.” Id. at 10.
PTAB Issues Reminder on Defects
In a recent notice to an IPR petitioner (IPR2013-00373, Paper No. 3, entered June 25, 2013), the PTAB identified a series of errors requiring correction within 5 business days:
· Improper usages of claim charts: Claim charts should be presented in a readable format so that a reader (e.g., the patent owner or a deciding official) is able to locate the claim limitations and the relied-upon portions of the prior art quickly. Presenting claim limitations and prior art teachings in a single column format creates inefficiency and, at times, appears to circumvent the page limit set forth in 37 C.F.R. § 42.24. Claim limitations should be presented in a separate column (e.g., claim limitations in the left column and prior art teachings in the right column).
· Petition exceeds page limit. 37 C.F.R. § 42.24.
· Petition does not contain an exhibit list referencing the correct exhibit numbers. 37 C.F.R. § 42.63(e).
· Failure to provide a statement identifying how the challenged claims are to be construed. 37 C.F.R. § 42.104(b)(3).
· Exhibits do not have a proper exhibit label at the lower right corner of the first page of the exhibits. 37 C.F.R. § 42.63(d).
PTAB Trial Section Judges: Docket assignments continue to show a heavy load of cases being assigned to several experienced inter partes APJs, as reflected in the list below drawn from the spreadsheet. These numbers do not reflect any decrease as a result of terminations of proceedings or assignment of proceedings to another APJ for authoring an opinion. Three APJs were added to the list of those managing cases in June 2013, namely APJs Karl Easthom, Scott E. Kamholz and Bryan F. Moore (the latter to be distinguished from Deputy Chief Judge Jay Moore who is sometimes empaneled on IPR and CBM matters but, to whom, no proceeding has been assigned for management purposes). Two other APJs appeared as members of inter partes panels of the first time, namely APJs Jacqueline Wright Bonilla and Georgiana W. Braden.