Category Archives: Motion to Amend

Final Written Decision According Little or No Weight to Expert Testimony Repeating Attorney Argument IPR2014-00583

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Takeaway: Expert testimony that “does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel” will be accorded little or no weight.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that claim 1 of the ’430 patent is unpatentable. Petitioner had challenged claims 1, 18, 21, 26, 27, 30, and 34-41 in its Petition, but trial was only instituted as to claim 1 on the ground of alleged anticipation by Starke. Because claim 1 was not found to be unpatentable, the Board did not reach Patent Owner’s Contingent Motion to Amend. Continue reading →

Final Written Decision Canceling all Challenged Claims and Denying Entry of any Substitute Claims IPR2014-00242

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Takeaway: To demonstrate written description support for proposed substitute claims in a motion to amend, a patent owner should provide explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole; citations to portions of the original disclosure alone would be insufficient.

In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend as to the request to cancel claims 1-3, 5, and 6 of the ’047 patent. However, the Board denied the Motion to Amend as to the request to add proposed substitute claims 7-11. Continue reading →

Order Providing Guidance for a Motion to Amend IPR2015-00040

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Takeaway: In a motion to amend, it is not the patent owner’s duty to show patentability over all existing prior art. However, if a petitioner identifies prior art in its opposition, then the burden of persuasion remains with the patent owner to demonstrate patentability of the amended claims.

In its Order by an expanded panel, the Board provided further guidance regarding filing of motions to amend. Patent Owner requested a conference call to discuss its intent to file a motion to amend. The Board instructed Patent Owner to follow all of the requirements articulated in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013). The Board then clarified the statement in Idle Free that the patent owner must show patentable distinction over the prior art of record and prior art known to the patent owner.

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Federal Circuit: Permissible to require patentee to show substitute claims are patentable over all prior art of record IPR2012-00026, IPR2013-00109

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Takeaway: It is permissible for the Board to require a patentee to show that its proposed substitute claims are patentable over all prior art of record, even if certain prior art did not form the basis for institution of the proceeding with respect to the corresponding challenged claim.

In its Opinion, the United States Court of Appeals for the Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part the Final Written Decisions of the Patent Trial and Appeal Board in the inter partes review of U.S. Patent No. 6,757,717 and remanded the case to the Board for further proceedings.

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Final Written Decision Finding that Motivation Reference was not Required IPR2014-00245

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Takeaway: A reference that is relied upon to show motivation for a proposed modification in an obviousness ground of unpatentability is not required as part of an obviousness case, and therefore, may not need to be a printed publication under 35 U.S.C. § 102.

In its Final Written Decision, the Board granted-in-part Patent Owner’s Motion to Amend. In particular, the Board granted the Motion with respect to Patent Owner’s request to cancel claims 1-24 of the ‘684 patent, but the Motion was denied with respect to proposed substitute claims 25-48. Continue reading →

Final Written Decision Invalidating All Challenged Claims IPR2014-00204

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Takeaway: If a patent owner attempts to improperly narrow the meaning of claim terms and then applies that improper construction in its analysis of the grounds of unpatentability, the Board is not likely to be persuaded by the patent owner’s analysis. 

In its Final Written Decision, the Board found that all of the challenged claims (1, 2, 6-11, and 13-19) of the ’126 Patent and denied Patent Owner’s Motion to Amend. The ’126 Patent attempts to address degradation in optical recording media, such as CDs and DVDs, which occurs after repeated recording or playing. Continue reading →

Final Written Decision Granting Motion to Amend IPR2014-00192

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Takeaway: A patent owner may meet its burden in establishing that replacement claims are patentable over the prior art of record where the prior art does not indicate an art-recognized benefit corresponding to a new claim range limitation, even where the same prior art teaches or suggests a lower range having beneficial effects.

In its Final Written Decision, the Board held that Petitioner proved by a preponderance of the evidence that all challenged claims 1-24 of the ’492 patent are unpatentable for being obvious under 35 U.S.C. § 103. In one of few instances, however, the Board also granted Patent Owner’s Motion to Amend as to proposed substitute claims 25-28, finding those claims patentable in view of the prior art of record. Continue reading →

Motion to Amend Denied For Not Providing Claim Construction and Written Description Support IPR2014-00052

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Takeaway: Patent Owner has the burden of demonstrating the patentability of claims proposed in a motion to amend, which in turn requires that Patent Owner submit proposed claim term constructions, and the motion to amend must identify where written description support exists for each proposed substitute claim.

In its Final Written Decision, the Board held all of the challenged claims of the ’314 patent unpatentable. Also, the Board denied Patent Owner’s contingent Motion to Amend. Continue reading →

Final Written Decision IPR2014-00039

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Takeaway: A prior art reference does not have to disclose the exact terminology used in the claim.

In its Final Written Decision, the Board found that all of the challenged claims, claims 11-22, of the ’314 Patent are unpatentable and denied Patent Owner’s Motion to Amend. The ’314 Patent relates to user interfaces that provide advertising obtained over a global computer network. Continue reading →

Final Written Decision IPR2014-00183

Finding All Challenged Claims Unpatentable

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Disclaimer: The law firm of Drinker Biddle & Reath LLP, provider of this blog, served as counsel for Petitioner in this proceeding.

Takeaway: A claimed combination will be considered to have been obvious where all of the recited limitations were known in the prior art and the combination yields nothing more than predictable results.

In its Final Written Decision, the Board found that each of challenged claims 1, 4-15, and 20-22 of the ’796 patent is unpatentable. The Board also denied Patent Owner’s Contingent Motion to Amend. Continue reading →