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]
Patent Owner requested a conference call to discuss its intent to file Motion to Amend claims two days before the due date.
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. It is worth noting that the scope of prior art was clarified in the Federal Register, Vol. 81, No. 63, Friday, April 1, 2016, p. 18754 as follows:
- (a) Prior art of record refers to any material in the prosecution history of the patent,
- (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review;
- (c) any material art of record in other proceeding before the Office involving the patent at issue;
- (d) 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; and
- (e) an other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced.
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.
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 (whether in the petition or prosecution history record) and prior art known to the patent owner.
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