Takeaway: In providing written description support for substitute claims, indicating where each limitation is individually described in the original disclosure may not be sufficient to demonstrate support for the claimed subject matter as a whole, which is what is required.

In its Order, the Board expunged a chart that was submitted in support of Patent Owner’s Reply in Support of its Motion to Amend and denied Petitioner’s request to file a motion to strike said exhibit. Relevant Exhibit 2075 is a 91 page chart that lists support in the provisional application for “amended claim 4” in Patent Owner’s Corrected Motion to Amend.  The Board previously determined that the document in Relevant Exhibit 2075, which was originally filed as Exhibit C to Patent Owner’s Motion to Amend, was not proper in this proceeding and ordered Patent Owner to file a corrected motion to amend, which it did without Exhibit C.  In response to Petitioner’s Opposition, which stated that Patent Owner had not established support for the substitute claim, Patent Owner submitted Relevant Exhibit 2075 on the basis that Petitioner was now demanding the information set forth in the chart.

In finding once again that the chart was not proper, the Board stated that Petitioner’s Opposition does not change the nature of the chart or render it appropriate. The Board noted that Patent Owner was required to provide written description support for the amended claims within the page limits allotted for a motion to amend.  The Board also noted that pursuant to Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper 27, merely indicating where each claim limitation is individually described in the original disclosure, like in Relevant Exhibit 2075, may not be sufficient to demonstrate support for the claimed subject matter as a whole, and the focus of the inquiry is whether the original disclosure conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date.  Further, citations to a provisional application may be insufficient because they are relevant only for the benefit claimed under 35 U.S.C. § 119(e) and not for written description support for substitute claims.  Therefore, the Board expunged Relevant Exhibit 2075 and denied Petitioner’s Motion for Leave to File a Motion to Strike Relevant Exhibit 2075 as moot.

SAP America, Inc. v. Pi-Net International, Inc., IPR2013-00194
Paper 50: Order Denying Petitioner’s Request to File Motion to Strike and Expunging Exhibit 2075
Dated: April 30, 2014
Patent 8,108,492 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara