Takeaway: A patent owner must establish, in its motion to amend, written description support in each ancestral application that is in the chain of applications leading to the application with the earliest filing date desired by the patent owner.
In its Order, the Board (1) denied Patent Owner’s request to address the disclosure of five intermediate applications in the continuity chain of the ’788 Patent, (2) denied Patent Owner’s request to file a second Motion to Amend, and (3) authorized Patent Owner to file as supplemental evidence 12 copies of the Fry reference.
First, Patent Owner requested authorization to address the disclosures of five patent applications in the chain of applications leading to the application with the filing date sought by Patent Owner. Petitioner had argued in its Opposition to the Motion to Amend that Patent Owner had failed to establish entitlement to the earlier alleged filing date in the Motion. In response, Patent Owner sought to address the disclosures of the intervening applications in its Reply. The Board denied the request, stating that insufficient time remained in the proceeding to provide Petitioner with an opportunity to respond to Patent Owner’s Reply.
Patent Owner also asked permission to file another Motion to Amend in which it would make the requisite showing of support in the intermediate applications. The Board denied this request for the same reasons discussed with respect to Patent Owner’s Reply.
Second, Patent Owner requested authorization to file a second Motion to Amend to address Petitioner’s argument presented in the Opposition to the Motion to Amend that the proposed substitute claims are capable of two interpretations and are indefinite under 35 U.S.C. § 112, second paragraph. The Board denied the request, holding that Patent Owner’s proposal is inconsistent with the framework of the proceeding. As the Board noted, the proceeding would have no end if Patent Owner were allowed to “keep filing further proposed amendments on the contingency that the Board concludes in favor of the Petitioner with regard to an earlier Motion to Amend.” The Board also agreed with Petitioner that it would be inequitable to allow Patent Owner to pick which of the two claim interpretations to adopt after the issue had been identified by Petitioner.
Finally, the Board authorized Patent Owner’s request to file 12 copies of the Fry reference as supplemental evidence. Patent Owner explained that the 12 copies were produced by Petitioner and had a date stamp subsequent to the filing date of the challenged patent. The Board authorized Patent Owner to submit the copies with a single introductory paragraph containing a joint statement regarding the identification of the 12 copies of Fry.
Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00417
Paper 41: Order on Conduct of Proceedings
Dated: June 26, 2014
Before: Jameson Lee, Barbara A. Parvis, and Gregg I. Anderson
Written by: Lee