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. Continue reading
Category Archives: Motion to Amend
Final Written Decision (Motion to Amend) CBM2013-00005
In its Order, the Board granted Patent Owner’s request to cancel claims 1-4, denied Patent Owner’s request to add proposed claims 5-8, and dismissed Patent Owner’s motion to exclude evidence. Continue reading
Order Denying Motion to Terminate Ex Parte Reexamination IPR2013-00289
In its Order, the Board denied Petitioner’s Motion to Terminate, or alternatively stay, ex parte reexamination no. 90/013,148, in which Patent Owner had requested to amend the claims at issue in this proceeding. Petitioner argued that Patent Owner’s pursuit of amendments in the ex parte reexamination is inconsistent with Congress’s intent that the IPR tackle all issues at once and is also inconsistent with the Board’s guidance that ex parte reexamination is for structural changes to the claims. The Board was not persuaded by these arguments and instead found that the AIA does not prohibit Patent Owners from amending its claims by other means. Further, it agreed with Patent Owner that its pursuit of amendments in ex parte reexamination is not inconsistent with the guidance in this proceeding, and the Board did not restrict amendment via ex parte reexamination to complete restructuring of claim structure. The Board requested that Patent Owner notify the Board as soon as possible whenever the status of the ex parte reexamination changes. Continue reading
Granting Leave to File Revised Motion to Amend IPR 2013-00226
In its Order, the Board granted Patent Owner’s Motion for Leave to File a Revised Motion to Amend. Patent Owner stated that the revised motion would only change proposed substitute claims 17, 18, and 23 to recite “a” instead of “the” (or the like) and correct instances where Petitioner alleges the claims lack proper antecedent basis. Patent Owner asserted that good cause exists for authorizing the changes because they are non-substantive and would resolve any dispute as to whether the proposed substitute claim terms have the proper antecedent basis. Petitioner disputed Patent Owner’s assertions of good cause, but did not explain why. Continue reading
Final Written Decision and Denying Motion to Amend IPR2013-00029
In its Decision, the Board held that Xilinx had shown by a preponderance of the evidence that the challenged claims 1-3 of U.S. Patent No. 5,632,545 (“the ’545 Patent”) are unpatentable under 35 U.S.C. § 103(a). The Board denied Intellectual Ventures I LLC’s (“IV”) Motion to Amend Claims. Finally, the Board denied IV’s Motion to Exclude Evidence. Continue reading
Denying Motion to Dismiss Motion to Amend IPR2013-00302
In its Order, the Board denied Petitioner’s request to dismiss Patent Owner’s Motion to Amend with prejudice. Petitioner argued that the Motion to Amend should be dismissed because it was filed late, Patent Owner did not properly “confer” with the Board regarding the extensive claim amendment, and the Motion contained alleged substantive deficiencies, such as treating the prior art insufficiently and incorporating improperly by reference arguments from a declaration. The Board stated that late action will be excused either upon a showing of good cause or a Board decision that consideration on the merits would be in the interest of justice. The Board stated that based upon the facts presented, the late filing would be excused. The Board also disagreed that Patent Owner did not confer with the Board, citing to its December 20, 2013 Order. Finally, the Board noted that arguments incorporated by reference from one document into another may be overlooked, but Petitioner can address these deficiencies in its Opposition to the Motion to Amend. The Board also allowed Patent Owner to file exhibits referenced in the declaration and provide correct citations to the declaration in the Patent Owner Response. Continue reading
Final Written Decision and Denying Motion to Amend IPR2012-00006
In the Final Written Decision, the Board held that Illumina has shown by a preponderance of the evidence that claims 1-7, 11, 12, 14, 15, and 17 of U.S. Patent No. 7,173,698 (“the ’698 Patent”) are unpatentable, denied Columbia’s Motion to Amend the claims, and dismissed as moot both parties’ Motions to Exclude Certain Evidence. Continue reading
Final Written Decision and Denying Motion to Amend IPR2013-00033
Takeaway: Evidence of an earlier date of invention to antedate a reference should be corroborated. For a motion to amend to be granted, a patent owner must provide a claim construction for the new claims, specific support for all of the limitations including a copy of any priority application, and fully address obviousness with regard to any art known to the patent owner with respect to the substitute claims.
In the Final Written Decision, the Board held that CBS had shown by a preponderance of the evidence that the challenged claims 1, 3-5, 11, 13, 15, 16, 18, 20, 21, 23, 24, 26, 28, 29, 41, 43-45, 51, 53-56, 58, 60, 61, 71, 73-75, 81, 82, 84, 86, 87, 89, 91, 92, and 94 of U.S. Patent No. 7,155,241 (“the ’241 Patent”) are unpatentable under 35 U.S.C. § 103(a). The Board denied Helferich Patent Licensing’s (“HPL”) motion to amend claims, holding that HPL had failed to meet its burden of showing the proposed substitute claims were patentable. Finally, the Board dismissed as moot both parties’ motions to exclude evidence. Continue reading