MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. Reald, Inc.


Paper 42, July 15, 2015

IPR2015-00040 (Patent 8,220,934 B2)

[In Motion to Amend Claims, the burden is on the patent owner to show patentable distinction over the prior art of record and prior art known to the patent owner]

FACTS

Patent Owner requested a conference call to discuss its intent to file Motion to Amend claims two days before the due date.

HOLDING

The Board suggested requesting a conference call to confer with the Board prior to filing Motion to Amend at least ten business days prior to the due date.

The Board clarified several key points regarding the following statement in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013) (Paper 26): The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.

  • Prior art of record refers to any material in the prosecution history of the patent, current proceedings, and other proceedings before the Office involving the patent at issue;
  • Prior art known to the patent owner refers to material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office;
  • Patent Owner should place initial emphasis on each added limitation in the proposed substitute claims as it is these added limitations that must be shown to render the corresponding claim patentable as a whole.

TAKEAWAY

Conference calls to confer with the Board prior to filing Motion to Amend Claims should preferably be requested at least ten business days prior to the filing due date. The burden is on the patent owner to show patentable distinction over the prior art of record and prior art known to the patent owner.

 

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