Takeaway: An additional motion to amend may be authorized by the Board only when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement.

In its Order, the Board denied Patent Owner’s request for authorization to file a revised motion to amend. Also, the Board authorized Patent Owner to file a supplemental paper addressing a proposed substitute claim.

Patent Owner had filed a Motion to Amend on August 7, 2014.  Patent Owner then sought authorization from the Board to file a revised motion to amend in order to add substitute claim 38 in place of challenged claim 14.  Patent Owner’s position was that the entry of proposed substitute claim 38 would correct a “printing error” in claim 14.  According to Patent Owner, although claim 14 (as issued) depends on claim 9, it should actually depend on claim 8.

The Board noted that proposed substitute claim 38 depends on claim 32 (the proposed substitute for claim 8) rather than on claim 33 (the proposed substitute for claim 9).  Petitioner’s Opposition asserted that this made claim 38 improper under 37 C.F.R. § 42.121(a)(2)(ii) because, as proposed, claim 38 did not include all of the limitations of corresponding claim 14.  In a teleconference attended by the Board and the parties, Patent Owner sought guidance on how to proceed, offering, as one option, to file a revised motion to amend in order to make claim 38 correspond to claim 14 as issued by amending claim 38 to depend from claim 33 rather than from claim 32.

The Board ultimately decided to deny authorization for Patent Owner to file a revised motion to amend.  According to the Board’s reasoning, although it was Patent Owner’s stated goal to correct a printing error in the issued version of claim 14, Patent Owner’s proposed amendment actually presented a claim that was not consistent with this goal.  Thus, the Board requested additional briefing from the parties regarding the proposed version of substitute claim 38 as written, to allow the parties to explain why the dependency of original claim 14 is/is not a “printing error” and why the version of proposed substitute claim 38 depending from claim 32 rather than claim 33 is/is not proper under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245 
Paper 25: Order on Conduct of the Proceeding 
Dated: November 19, 2014
Patent: 8,392,684 B2 
Before: Denise M. Pothier, Justin T. Arbes, and Hyun J. Jung
Written by: Arbes