Takeaway: Good cause may exist to amend a motion to amend that corrects non-substantive errors in the amendments, particularly if the corrections reduce the number of issues to be considered. However, the Patent Owner may be precluded from presenting new arguments in its motion while Petitioner may be allowed to file a supplemental opposition.
In its Order, the Board granted Patent Owner’s Motion for Leave to File an Amended Motion to Amend, but limited the subsequent briefing on the motion. Patent Owner stated that the amended motion would only change certain substitute claims to correct inadvertent errors, such as erroneously underlining certain phrases, failure to underline certain phrases, and omission of a limitation. Petitioner argued that no good cause existed to make the changes, that the addition of a limitation would alter the scope of the claim, and that allowing Patent Owner to cure defects raised by Petitioner in its opposition would create a disincentive for other petitioners to note such defects. The Board noted that allowing the amendment would reduce the number of issues to be considered and that good cause existed for the revisions because they are limited. However, the Board stated that because Patent Owner has argued that it is only making non-substantive revisions, Patent Owner cannot file any new argument in its supplemental papers. Further, the Board allowed Petitioner to file a supplemental opposition directed to the revised substitute claims, but did not authorize a reply from Patent Owner.
Volusion, Inc. v. Versata Software, Inc. and Versata Development Group, Inc., CBM2013-00018
Paper 31: Order on Conduct of the Proceeding
Dated: April 4, 2014
Before: Howard B. Blakenship and Kevin F. Turner
Written by: Turner