Denying Motion for Leave to File Additional Motion to Amend IPR2013-00333


Takeaway: A patent owner will still retain any entitled priority date afforded under 35 U.S.C. § 120 for an application that is a continuation of a prior application even if it does not cite to the prior application to show written description support for proposed amended claims.

In its Decision, the Board denied Patent Owner’s request for authorization to supplement its Motion to Amend to expressly claim priority to an earlier-filed patent application and to identify support for the subject matter of the substitute claims in the application.

During a conference call after filing its Motion to Amend, Patent Owner noted that the Motion identifies support for the proposed amended claims in application 12/270,129 (“the ’129 Application”) that led to the issuance of the ’473 Patent. Although the ’129 Application is a continuation of application 11/018,947 (“the ’534 Application), and purportedly contains the same disclosure as the ’534 Application, Patent Owner did not identify the ’534 Application as supporting the proposed amended claims in the Motion.  Petitioner’s Opposition to the Motion to Amend argued that the Motion should be denied because the disclosure in the ’534 Application renders the subject matter of the proposed amended claims unpatentable under 35 U.S.C. § 102 and/or § 103.  In its Reply, Patent Owner argued that the claims are entitled to the benefit of the ’534 Application and its citation to the ’129 Application was consistent with the guidance it received during a conference.  The Board noted that the summary of that conference states that Patent Owner must set forth the support in the original disclosure of the patent for each proposed substitute claim.

Patent Owner sought to supplement its Motion to Amend to cite the disclosure in the ’534 Application, which it argued is the same exact disclosure from the ’129 Application. Petitioner argued that none of the considerations for authorizing an additional motion to amend favor Patent Owner because Patent Owner knew of the ’534 Application disclosure at the time it filed its Motion to Amend and there was less than a month remaining before oral hearing.

The Board declined to authorize Patent Owner’s additional motion to amend because it would delay the proceedings and would have no effect on the outcome of the proceeding. Even if Patent Owner could claim an earlier disclosure as providing written description support under 35 U.S.C. § 112 for the proposed claims, that does not change the fact that the ’129 Application is a continuation of the ’534 Application and is therefore entitled to the priority date afforded by the ’534 Application under 35 U.S.C. § 120.  Patent Owner’s reliance on the ’129 Application for written description support does not disclaim the priority asserted in the ’129 Application.  Therefore, the ’534 Application is not available as prior art to the ’129 Application.

Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00333
Paper 61: Decision Declining to Authorize Patent Owner’s Filing of an Additional Motion to Amend
Dated: August 8, 2014
Patent 8,831,473 B2
Before: Brian J. McNamara, Trenton A. Ward, and Miriam L. Quinn
Written by: McNamara