Takeaway: In a CBM proceeding, where an original claim is found to be patentable over the prior art, but unpatentable as indefinite, and the substitute claim merely narrows the scope of the original claim to cure the indefiniteness problem, then the patent owner does not have to make an additional showing to prove that the substitute claim is patentable over the prior art.

In its Decision, the Board granted in part and denied in part Patent Owner’s request to modify the Final Decision.  Specifically, the Board declined to modify the Final Decision except as to its denial of the Motion to Amend as to proposed, substitute dependent claim 54.
In its Request for Rehearing, Patent Owner presented four arguments.  First, Patent Owner contended that its Motion to Amend was directed solely to the issue of indefiniteness under 35 U.S.C. § 112 ¶ 2, and that in denying the Motion to Amend, the Board overlooked the initial determination that dependent claim 5 is patentable over the prior art cited in the Petition, and, therefore, Patent Owner was not required to demonstrate further that proposed claim 54 is patentable over the prior art.  Patent Owner further argued that the Board’s reliance on Idle Free was misplaced because that was a decision in an inter partes review, where § 112 challenges are not permissible.  The Board found that Idle Free is applicable because the statutory provisions regarding motions to amend are identical, and § 112 challenges are permissible in inter partes review proceedings in the context of motions to amend.

However, the Board found that Patent Owner had made a showing of patentability over the prior art in general for proposed claim 54.  Petitioner argued that Patent Owner had not distinguished the new claim over the prior art.  However, the Board stated that the particular facts of the case were otherwise.  In the Final Decision, the Board determined that Petitioner had not met its burden of showing that dependent claim 5 was obvious over the prior art, however, the Board found that claim 5 was indefinite under § 112.  Proposed claim 54 in the Motion to Amend was found to be the same as claim 5 except for claim 54 deleted the indefinite language.   The Board found that the requirement of showing patentability over the prior art in general is based on the assumption that the original claim does not survive the challenge based on the prior art asserted by petitioner.  However, because Petitioner here did not make such a showing, the Board found that Patent Owner did not need to do more to show patentability.  Claim 5 was examined by the PTO and survived the further challenge over the prior art.  The Board therefore found that this fact, taken with the fact that claim 54 only narrows the scope of claim 5 to cure the indefiniteness problem is sufficient to satisfy the burden of demonstrating patentability of proposed claim 54.  The Board then addressed and dismissed Petitioner’s further arguments against substitution of claim 54, such as that claim 54 broadens the scope of the claim and that there is no written description support for the new claim.  Therefore, the Board vacated the Final Decision as to the Motion to Amend as to proposed dependent claim 54.

The Board then addressed Patent Owner’s remaining arguments.  First, Patent Owner argued that the Board overlooked a particular claim limitation that was argued separately in the Patent Owner Response.  However, the Board found that this argument was not presented and developed in the first instance, therefore, it was not overlooked.  Patent Owner also argued that the Board misapprehended arguments in the Patent Owner Response, however, the Board found that they had been considered.  Finally, Patent Owner argued that the Board overlooked Petitioner’s exclusive reliance on a piece of prior art, but the Board found that Patent Owner had mischaracterized the art.

Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2013-00027
Paper 38: Decision Granting-in-part Patent Owner’s Request for Rehearing
Dated: March 23, 2013
Patent 6,418,419 B1
Before: Jameson Lee, Joni Y. Chang, and Michael R. Zecher
Written by: Zecher