Takeaway: Parties that wish to argue that the Board should employ a different claim construction standard may be required to present its arguments during the oral hearing rather than in additional briefing.

In its Order, the Board granted Patent Owner’s request to file a second Motion to Amend to correct what it argued were potential ambiguities in the proposed substitute claims in the first motion. The Board also authorized Patent Owner to raise, during the oral hearing, the issue of which standard of claim construction should be employed.

With respect to the Motion to Amend, Petitioner opposed the filing of a second motion, arguing that the proposed changes would raise new issues as to patentability. In granting the request to file the corrected motion, the Board authorized Petitioner to file up to five pages of additional briefing addressing solely the changes introduced in the corrected motion.

With respect to claim construction, Patent Owner requested authorization to provide briefing in support of its argument that the district court standard should be employed by the Board. Petitioner opposed.  Rather than authorizing additional briefing, the Board authorized Patent Owner to raise the issue during the oral hearing.

Microsoft Corp. v. SurfCast, Inc., IPR2013-00292

Paper 77: Order on Conduct of the Proceedings
Dated: June 4, 2014
Patent: 6,724,403
Before: Michael P. Tierney and Matthew R. Clements
Written by: Tierney
Related Proceedings: IPR2013-00293, IPR2013-00294, and IPR2013-00295