Final Written Decision and Denying Motion to Amend IPR2013-00120


Takeaway: In a motion to amend, the patent owner must not only show that the substitute claims are patentable over the prior art upon which trial was instituted, but must also show that the substitute claims are patentable over all prior art known to the patent owner, including new prior art asserted by the petitioner in the opposition to the motion to amend.

In its Final Written Decision, the Board found claims 1-27 of the ’558 Patent unpatentable, denied Patent Owner’s Motion to Amend, and dismissed Petitioner’s Motion to Exclude Evidence. The ’558 Patent relates to “building blocks incorporating a variety of colored lights that can mimic the look of a laser and can be interlocked to make a variety of multi-colored 3-dimensional shapes.”

The Board began by noting that Patent Owner did not file a response to the Petitions, and determined that based upon the evidence presented by Petitioner that it has shown by a preponderance of the evidence that claims 1-27 are unpatentable as obvious over Teller and Rosen I; claims 1-6, 8-22, 24, 26, and 27 are unpatentable as anticipated by Doherty; claims 7, 23, and 25 are unpatentable as obvious over Doherty and Rosen I; and claims 18-25 are unpatentable as obvious over Feurborn and Rosen I.

The Board then began review of the Motion to Amend by stating that a motion to amend should identify how the proposed substitute claims are to be construed, especially when proposed substitute claims introduce new claim terms or features, and the motion must explain how the construed claim is distinguishable over the art. The Board noted that neither party challenged the Board’s interpretation in the Decision to Institute of certain claim terms that appeared in both the original claims and the amended claims; therefore, those interpretations were adopted.  The Board then examined the preamble terms and found that the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims; therefore, those terms are not limiting.  The Board then addressed the construction of male and female mechanical connectors, and found that the connectors in substitute claims 28 and 31 must be part “of” the non-opaque body, the blocks in substitute claim 29 must “have” connectors, and the connectors in substitute claim 30 may be attached permanently or removably.  The Board then adopted its original interpretation of “means for conducting electrical current through the LED in each block and each block of the electrically conductive mechanical connectors of each block,” stating that it is a means-plus-function limitation having the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” with a corresponding structure of power source 70.  The Board then noted that although neither party proposed constructions for the claim language added in substitute claims 28-31, the Board found it necessary to construe the terms “non-conductive,” “at any degree of rotation,” and “cylindrical” because the specification does not define these terms.  The Board looked to dictionary definitions to construe them.

The Board then turned to the scope of a motion to amend, noting that the motion may be denied if (1) the amendments seek to enlarge the scope of the original claims; (2) the amendments introduce new subject matter; or (3) the amendments do not respond to a ground of unpatentability upon which trial was instituted. The Board found that Patent Owner’s Motion to Amend met all of these criteria.  Specifically, the Board found that the amendments narrowed the original scope of the claims, that the amendments are supported by the written description of the application from which the ’558 Patent issued, the amendments responded to the grounds of unpatentability upon which trial was instituted, and the substitute claims are definite.  In examining definiteness, the Board cited to the recent U.S. Supreme Court case, Nautilus, Inc. v. BioSig Instruments, Inc., No. 13-369, 2014 WL 2440536, for its “reasonable certainty” standard.

The Board then discussed patentability over prior art, noting that in a motion to amend, the patent owner bears the burden of establishing patentability of the proposed substitute claims over the prior art of record and also other prior art known to the patent owner. The Board denied Patent Owner’s Motion to Amend because Patent Owner did not meet this burden, and because Petitioner persuaded the Board that the substitute claims would have been rendered obvious over the teachings of Teller, Rosen I, and Pawloski.  Specifically, Patent Owner limited its discussion of prior art solely to those references upon which trial was instituted and did not respond to any of Petitioner’s arguments for unpatentability based on combinations including newly cited references.  Instead, Patent Owner misunderstood the nature of Petitoner’s opposition to the Motion to Amend, stating that the Board does not have statutory authority to substitute new grounds of rejection for those for which review was instituted.

Turning then to Petitioner’s Motion to Exclude certain evidence submitted with the Motion to Amend, the Board did not rely on that evidence in denying Patent Owner’s Motion to Amend. Therefore, the Board dismissed the Motion to Exclude as moot.

LaRose Industries, LLC v. Capriola Corp., IPR2013-00120
Paper 37: Final Written Decision
Dated: June 26, 2014
Patent 7,731,558 B2
Before: Kevin F. Turner, Justin T. Arbes, and James B. Arpin
Written by: Arpin
Related Proceeding: Capriola Corp. v. LaRose Industries, LLC, No. 8:12-cv-02346 (M.D. Fla.)