Takeaway: To demonstrate written description support for proposed substitute claims in a motion to amend, a patent owner should provide explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole; citations to portions of the original disclosure alone would be insufficient.

In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend as to the request to cancel claims 1-3, 5, and 6 of the ’047 patent. However, the Board denied the Motion to Amend as to the request to add proposed substitute claims 7-11.

The ’047 patent relates to “online communications over a network among members of a group of recipients.” Petitioner challenged claims 1-3, 5, and 6 of the ’047 patent. Patent Owner did not file a Patent Owner Response, but instead filed a Motion to Amend requesting the cancellation of claims 1-3, 5, and 6 in favor of proposed substitute claims 7-11.

The Board first addressed claim construction, interpreting the claim terms according to their broadest reasonable interpretation in light of the specification. With respect to the proposed substitute claims, Patent Owner indicated that the term “group” should be defined as “a group of a plurality of members for whom the first computer system has stored information in a database.” However, the Board found that the proposed definition would not “add any clarity to the terms ‘member’ and ‘group,’ which are simple and commonly understood terms.” Therefore, the Board did not expressly construe any claim terms.

Turning to the merits of the Motion to Amend, the Board noted that Patent Owner must establish that it is entitled to the relief requested and must show “that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art.”

The Board found that Patent Owner proposed a reasonable number of claims, given the one-to-one correspondence between the proposed substitute claims and the challenged claims. The Board also found that the proposed claims do not enlarge the scope because the substitute claims add limitations without deleting any limitations from the challenged claims.

With respect to written description support, the Board agreed with Petitioner that Patent Owner had not established adequate support for the limitations of proposed substitute claim 10. Further, the Board noted that “Patent Owner’s mere citation in a table to various portions of the original disclosure, without any explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole, is inadequate to satisfy the written description requirement.” The Board found this reasoning to be applicable to all proposed substitute claims, but since Petitioner only focused on claim 10, the Board proceeded to analyze the prior art.

Patent Owner must demonstrate patentability over the prior art in a Motion to Amend, which “includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art.” Petitioner argued that the prior art of record renders the proposed substitute claims obvious. In particular, Petitioner argued that a prior appeal in a reexamination proceeding involving the parent application of the ’047 patent was instructive in that the Board found claims anticipated by one of the asserted prior art references, GeoCities. The Board was not persuaded because the reexamination proceeding involved claims in a parent application that were different from the proposed substitute claims at issue.

In the alternative, Petitioner argued that the substitute claims would have been obvious in view of an additional reference, Sutcliffe. The Board first adopted its findings from its Decision on Institution that the prior art cited in the Petition taught or suggested the limitations of the challenged claims. The Board next addressed whether Sutcliffe disclosed the added limitations of proposed substitute claim 7. The Board agreed with Petitioner’s analysis of Sutcliffe and found Patent Owner’s arguments unpersuasive. In particular, the Board held that Patent Owner failed to take into account the combination of prior art references and instead argued the alleged deficiencies of Sutcliffe. In addition, Patent Owner argued that the prior art does not disclose the occurrence of certain recited limitations in a particular order. The Board was not persuaded, finding that the claims do not recite a particular order and that importing such “temporal restriction” from the specification would be improper. The Board was also persuaded by Petitioner’s arguments that the combination of references would have been “predictable and proper.” Accordingly, the Board found proposed substitute claim 7 to be unpatentable.

With respect to proposed dependent claims 8-11, the Board found Petitioner’s arguments to be persuasive. In addition, because claim 10 was not sufficiently supported, the Board did not address Patent Owner’s patentability arguments with respect to that claim.

Petitioner had also asserted that proposed substitute claims 7-11 recited ineligible subject matter. However, because the Board found that claim 10 lacked sufficient written description support and claims 7-9 and 11 were unpatentable over prior art, the Board did not address the Section 101 argument.

Thus, the Board found that Patent Owner had not demonstrated by a preponderance of the evidence that the proposed substitute claims are patentable and denied the Motion to Amend as to those claims.

Facebook, Inc. v. EveryMD LLC, IPR2014-00242
Paper 31: Final Written Decision
Dated: May 12, 2015
Patent: 8,499,047 B2
Before: Kristen L. Droesch, Michael R. Zecher, and Peter P. Chen
Written by: Chen
Related Proceedings: EveryMD LLC v. Facebook, Inc., No. 13-cv-04202 (C.D. Cal.); EveryMD LLC v. eBay Inc., No. 13-cv-08017-gw (C.D. Cal.)