Takeaway:  The Board will likely not allow a Patent Owner to provide additional argument in a revised motion to amend where the Patent Owner asserted that the revisions were not substantive; Petitioner still will have an opportunity to respond.

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.

The Board stated that additional motions to amend may be authorized by the Board when there is a showing of good cause or a joint request of the parties to materially advance a settlement.  In determining whether there is good cause, the Board considers “whether petitioner has submitted supplemental information after the time period set for filing a motion to amend,” “the time remaining for the trial, the degree to which the additional evidence impacts the patentability of the claims sought to be amended, and whether additional evidence was known to the patent owner before the time period [for filing the motion to amend].”

The Board then held that under the particular circumstances of the case, good cause existed for permitting Patent Owner to revise its proposed substitute claims because the revisions were limited to changes to resolve the issues of proper antecedent basis and Petitioner did not provide any basis to believe the revisions would substantively change the claims.  However, because Patent Owner had not made any substantive changes, it did not get to provide additional argument and could only file a supplemental paper listing the revisions, and Petitioner could file a supplemental opposition directed to the revised substitute claims with no reply from Patent Owner.

SAS Institute, Inc. v. ComplementSoft, LLC, IPR 2013-00226
Paper 27: Order on Conduct of the Proceeding
Dated: March 20, 2014
 Patent 7,110,936 B2
 Before: Kevin F. Turner, Justin T. Arbes, and Jennifer S. Bisk
 Written by: Arbes