Takeaway: A motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms.

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that claim 23 of the ’812 patent is unpatentable as anticipated by the prior art under 35 U.S.C. § 102. Also, the Board denied Patent Owner’s Motion to Amend and Patent Owner’s Motion to Exclude. The ’812 patent is directed to a coffee holder comprising a holder base, a holder lid, a tamper, and a filter. The coffee holder “self-tamps loose coffee grounds into a compacted state, e.g., for use in a coffee maker.”

Petitioner had requested inter partes review of claims 1, 2, 4-10, 14-17, and 19-23 of the ’812 patent, but the Board only instituted trial with respect to claim 23. Patent Owner filed a Motion to Amend as well as a Motion to Exclude the Declaration of Petitioner’s Dr. Alexander Slocum.

In its claim construction, the Board interpreted “tamper” to refer to an element that is “capable of compressing coffee, regardless of whether it occurs before or after liquid, such as water, is added to the coffee holder through the holder lid” and construed “a coffee holder engagable with a coffee maker” to mean “a coffee holder that is capable of engaging with a coffee maker.” The Board construed other claim terms as well.

In addressing Petitioner’s assertion that Zhao anticipates claim 23 of the ’812 patent, the Board noted that Patent Owner’s basic positions were that “first, the strainer in Zhao does not constitute a self-tamping coffee holder, and two, the strainer does not engage and dis-engage from a coffee maker.” The Board disagreed with Patent Owner’s positions, and went on to conclude that Petitioner had demonstrated by a preponderance of the evidence that Zhao anticipates claim 23.

Patent Owner had filed a Motion to Amend by which Patent Owner proposed to replace claim 23 with a substitute claim 24 reciting that the attached holder lid is configured to allow entry of a pressurized flow of liquid into the coffee holder through the lid (with proposed-to-be-added subject matter being underlined). But the Board found that Patent Owner had not adequately provided a claim construction for the new and relied-upon phrase “a pressurized flow of liquid.” Moreover, the Board found that Patent Owner’s Motion to Amend had not adequately addressed the “nonobviousness of substitute claim 24 in view of prior art of record, as well as prior art not of record but known to Patent Owner.” Instead, Patent Owner had only addressed “nonobviousness expressly for the first time in its Reply in support of its Motion.”

Patent Owner’s Motion to Exclude attempted to exclude the Declaration by Dr. Alexander Slocum that Petitioner had relied upon in its Reply to Patent Owner’s Response. Nonetheless, the Board denied this Motion because it did not rely upon Dr. Slocum’s Declaration in addressing Petitioner’s arguments regarding the alleged anticipation of claim 23 by Zhao.

Guangdong Xinbao Electric Appliances Holdings Co., Ltd. v. Adrian Rivera, IPR2014-00042
Paper 50: Final Written Decision
Dated: February 6, 2015
Patent: 8,291,812 B2
Before: Francisco C. Prats, Josiah C. Cocks, and Jacqueline Wright Bonilla
Written by: Bonilla