Takeaway: With authorization, proposed substitute claims may be filed in an appendix that does not count toward the 15-page limit for a motion to amend claims.

In its Order, the Board provided guidance to Patent Owner concerning the requirements of a motion to amend. It also authorized Patent Owner to place its proposed substitute claims in an appendix, such that it does not count toward the 15-page limit for a motion to amend claims.

The Board began by reminding Patent Owner that a motion to amend claims only may cancel claims or propose substitute claims. The request to cancel claims will not be regarded as contingent, whereas the request to substitute claims is always contingent upon the corresponding original claim being determined unpatentable by the Board or cancelled by Patent Owner.

After providing general guidance concerning proposed substitute claims, the Board explained that “the proposed substitute claim should not eliminate any feature or element of the original patent claim which it is intended to replace” and that “[i]f the Patent Owner needs more than one substitute claim for a particular patent claim, the motion should articulate a special circumstance to justify the request.”

The Board reiterated that Patent Owner must prove that it is entitled to the amended claims, which means that “the Patent Owner must show patentability over the prior art, in general, and not just over the references applied by the Petitioner against the original patent claims.” The motion also should “provide sufficient underlying facts regarding any feature added by the proposed substitute claim” and “should include a discussion of the ordinary skill in the art, with particular focus on the feature added to provide the basis of patentable distinction.”

Patent Owner also must show written description support in the originally-filed specification for the entirety of each proposed substitute claim. The Board also provided guidance concerning how Patent Owner should “account for written description support in ancestral applications.” The Board suggested (1) filing a copy of each application in the chain of priority applications, as originally filed, as exhibits; (2) attempting to seek agreement with Petitioner that each application in the priority chain has identical substantive disclosure with respect to the application, and (3) “indicate in the motion to amend that all applications in the chain of priority applications have identical substantive disclosure (if true) and all are continuation applications rather than continuation-in-part applications of the application one earlier in the chain; and that the parties have stipulated to these facts (if true).”

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441
Paper 19: Order on Motion to Amend Claims
Dated: October 30, 2014
Patent: 8,562,366
Before: Jameson Lee, Josian C. Cocks, and Jacqueline Wright Bonilla
Written by: Lee