Nichia Corp. v. Emcore Corp.

Paper 27, June 3, 2013

IPR2012-00005 (JYC) (Patent 6,653,215)

[The motion to amend must identify in the original disclosure of the patent a written description in support of each proposed substitute claim that reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter]

FACTS

A conference call was held between the Board and the parties to clarify whether Emcore complied with the requirement that the patent owner must confer with the Board before filing motion to amend claims. Emcore asserted that it met the requirement by listing the motion to amend claims in its list of contemplated motions filed before the initial conference call and by indicating the same during the conference call.

HOLDING

The Board held that Emcore complied with the requirement that the patent owner must confer with the Board before filing motion to amend claims. The Board explained that the purpose of that requirement is to provide the patent owner an opportunity to obtain guidance from the Board before filing a motion to amend. As the moving party, the patent owner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. § 42.20(c). The Board noted that a motion to amend must identify in the original disclosure of the patent the written description in support for each proposed substitute claim that reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date, pursuant to 37 C.F.R. § 42.121(b)(1). Citations to a provisional application are relevant only for the benefit claim under 35 U.S.C. § 119(e). The Board also explained that merely indicating each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole and additional explanation may be warranted.

TAKEAWAY

The requirement that a patent owner confer with the Board prior to filing motion to amend claims may be met by listing this motion on the list of contemplated motions filed with the Board prior to the initial conference call and/or indicating the same during the call. The motion to amend must identify in the original disclosure of the patent a written description in support of each proposed substitute claim that reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter. Merely pointing to claims in the original disclosure may not be enough and additional explanation may be warranted.

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