Corning Optical Communications RF, LLC v. PPC Broadband, Inc.


Paper 19, October 30, 2014

IPR2014-00441 (Patent 8,562,366 B2)

[In this order, The Board set out specific requirements for proposed substitute claims in motion to amend claims]

FACTS

PPC Broadband (Patent Owner) initiated a telephone conference with the panel and Corning Optical Communications (Petitioner) to satisfy the requirement of conferring with the Board prior to filing motion to amend claims pursuant to 37 C.F.R. § 42.121(a). The Board issued this order to provide additional guidance to Patent Owner regarding the requirements for such motion.

HOLDING

The Board provided the following guidance for filing motion to amend claims:

  • A motion to amend may cancel claims or propose substitute claims;
  • Substitute claims may be placed in an appendix and not count toward the 15-page limit for a motion;
  • Substitute claim will only be considered if the claim it replaces is canceled or determined unpatentable;
  • Proposed substitute claim must be responsive to ground of unpatentability applicable to the claim it replaces;
  • It is presumed that only one substitute claim is needed for each original claim; if more than one substitute claim is needed, the motion should articulate special circumstances to justify it;
  • Each proposed substitute claim must be traceable to the claim it replaces and clearly show the proposed changes (brackets to indicate deleted text and underlining to denote inserted text are suggested);
  • Patent Owner bears the burden to establish that it is entitled to relief requested (see 37 C.F.R. § 42.20(c));
  • Each proposed substitute claim must be supported by citations to specifications in the original disclosure of the application as filed (not to the patent as issued);
  • For new terms which are reasonably anticipated as subject to dispute, Patent Owner should provide proposed claim construction;
  • At least for any claim proposed as a substitute to a claim whose patentability is disputed, Patent Owner must show patentability over prior art  in general (not just over those references that are applied by Petitioner against the original claim);
  • To be entitled to the filing date of the earlier application with respect to proposed substitute claims, Patent Owner must:
    • File a copy of each application as an exhibit;
    • Seek agreement with Petitioner that each application in the priority chain has identical substantive disclosure;
    • Indicate the substantive identity (if true) to prior continuation application in the motion;

TAKEAWAY

A telephone conference satisfies the requirement of conferring with the Board prior to filing motion to amend claims. The Board set out specific requirements as to proposed substitute claims, including that each substitute claim correspond to the original claim, be supported by citing to specifications in the original disclosure, and be shown patentable over prior art if it substitutes a claim whose patentability is challenged by Petitioner.

 

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