Denying Motion to Exceed Page Limits IPR2013-00402

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Takeaway: The Board will only grant a request for additional pages beyond the 15 page limit for motions to amend if the issues in a case are overly complex or the claims are so voluminous that it would be unreasonable for the Patent Owner to meet the page limit.

In its Order, the Board denied a request by Patent Owner to file a consolidated motion to amend claims in two patents in two separate proceedings. The Board indicated that the two patents included different claims, and that the substitute claims would be different. Thus, the Board believed that a motion to amend claims should be separately filed in each proceeding.

The Board also denied a request by Patent Owner for 5 additional pages for the motion to amend. The Patent Owner argued that the proposed substitute claims themselves will take a large portion of the 15 page limit for the motion, and thus they need additional pages to address all of the requirements for a motion to amend. Although the Petitioner did not oppose the request, the Board denied the request, stating that the issues in this case do not appear overly complex or the claims so voluminous that it would be unreasonable for the Patent Owner to meet the 15 page limit. The Board also encouraged Patent Owner to propose focused amendments for a limited set of claims and to use the bulk of its motion to explain why the motion should be granted. The Board further reiterated some of the requirements for a motion to amend to be granted, including that the Patent Owner must show that its proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record, but known to Patent Owner. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art without reliance on any particular item of prior art.

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402 and IPR2013-00403
Paper 24: Order on Conduct of the Proceedings
Dated: March 27, 2014
Patents: 8,312,226 B2 and 8,370,583 B2
Before: Denise M. Pothier, Justin T. Arbes, and Miriam L. Quinn
Written by: Arbes