Petitioner Required to Map Prior Art Claims to Provisional Application IPR2015-01315


Takeaway: When, between the filing of a Petition and the Board’s decision on institution, it appears that there has been a change in the law that would require additional information to be included in a Petition, the Board may permit the Petitioner to submit a short supplemental paper to provide such information and, if the Patent Owner has already filed its Preliminary Response, the Board may permit the Patent Owner to submit a response to Petitioner’s additional paper.

In its Decision, the Board authorized Petitioner to file a non-argumentative claim chart showing where written description support for the claims of a cited prior art reference could be found in a related provisional patent application and authorized Patent Owner to file a response to Petitioner’s claim chart.

Petitioner requested a conference call with the Board “to seek guidance from the Board in light of the Federal Circuit’s recent decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 2015 WL 5166366 (Fed. Cir. Sept. 4, 2015).” The Board noted that Petitioner stated during the call that “for a prior art patent reference to be entitled to the filing date of an earlier provisional application, Dynamic Drinkware adds a requirement of mapping the claims of the patent reference back to the provisional application.” Citing prior Federal Circuit and Board decisions, Petitioner contended that this requirement is a “change in the law.” Petitioner also “stated it relied on MPEP § 2136.03(III) and did not map the claims of the Lai patent. . . to the Lai provisional application. . . in its Petition” and requested “authorization to file a non-argumentative claim chart mapping the claims of the Lai patent to the Lai provisional application.”

In response, Patent Owner disagreed with Petitioner’s position concerning whether there had been a change in the law, citing Apple, Inc. v. OpenTV, Inc., Case IPR2015-00969 (PTAB Sept. 23, 2015) (Paper 8) “as a case in which the Board determined it was necessary for the petitioner to show in the petition that a patent reference was entitled to the filing date of its corresponding provisional application” as well as In re Wertheim, 646 F.2d 527 (CCPA 1981). Patent Owner also argued that “allowing Petitioner to submit the requested claim chart would be tantamount to permitting Petitioner to file a reply to the [already-filed] Preliminary Response,” which Patent Owner contended “would be improper because the statute requires the Board’s decision to be based on the Petition.” Patent Owner further argued that the requested claim chart would result in a Petition that exceeds the 60-page limit and “would be prejudicial to Patent Owner because a response to the claim chart would require additional time and resources.”

After considering the Petitioner’s and Patent Owner’s positions, the Board “authorized Petitioner to file, within three business days, a claim chart showing where the Lai provisional application provides written description support for the claims of the Lai patent. The claim chart may not include any argument or explanatory text and shall not exceed five pages. ” The Board also authorized Patent Owner to file a 5-page response within three business days from the date that Petitioner files its claim chart. With respect to the issue regarding whether Dynamic Drinkware represents a change in the law, the Board stated that “[t]he Board’s precedential decision in Ex parte Yamaguchi appears to at least give the impression that Petitioner need not account for support in an ancestral provisional application of a patent reference for any claimed subject matter in that reference.” Accordingly, the Board “deem[ed] it appropriate to afford Petitioner an opportunity to provide the claim chart it seeks to submit.”

Nvidia Corp. v. Samsung Electronics Co., Ltd.,
Paper 9: Order – Conduct of the Proceeding
Dated: September 16, 2015
Patent: 6,819,602 B2
Before: Jameson lee, Patrick R. Scanlon, and Justin Busch
Written by: Scanlon