The Board Grants First Opposed Motions to Amend in Two IPR Trials (Part II): When Throwing Stones at Birds, Board Prefers Seeing One Bird Hit with Two Stones
January 21, 2015
Authored and Edited by Megan Leinen Johns; Anthony A. Hartmann
When throwing stones at birds, the Riverbed decisions highlight that Patent Owners and the Board may have different views on which bird got hit by which stone. The Patent Owner saw two stones hitting two birds, but the Board saw two stones hitting one bird. It is time to put on the Board’s substitute goggles.
One might reasonably expect that if a substitute independent claim is patentable over the art, then any dependent claim would be similarly patentable. Idle Free, however, outlines three scenarios, noting when the patent owner should show a claim is patentably distinct over other proposed substitute claims, i.e., treating them as prior art. In the Board’s view, proposed claims may amount to more than one permissible substitute claim for each challenged claim. See also 37 CFR § 42.121(a)(3).
Scenario 1: More Than One Proposed Substitute Claim for A Challenged Claim
| Challenged | Proposed Substitutes | Idle Free |
| Claim 1: A+B | Claim 2: A+B+Cx | |
| Claim 3: A+B+Cy | show patentable distinction over claim 2 | |
| Claim 4: A+B+Cz | show patentable distinction over claims 2 and 3 |
Scenario 2: Only Independent Proposed Substitute Claim Adds New Feature(s)
| Claim 1: A+B | Claim 4: A+B+X | |
| Claim 2(1): A+B+C | Claim 5(4): A+B+C+X | patentable if claim 4 is patentable |
| Claim 3(1): A+B+D | Claim 6(4): A+B+D+X | patentable if claim 4 is patentable |
Scenario 3: Dependent Proposed Substitute Claims Also Add New Feature(s)
| Claim 1: A+B | Claim 4: A+B+X | |
| Claim 2(1): A+B+C | Claim 5: A+B+C+X+Y | show patentable distinction over claim 4 |
| Claim 3(1): A+B+D | Claim 6: A+B+D+X+Z | show patentable distinction over claim 4 |
In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402 (Dec. 30, 2014) (Paper 35); IPR2013-00403 (Dec. 30, 2014) (Paper 33), the Board granted motions to amend, adding only two independent claims. But the Board denied two dependent substitute claims because the Patent Owner failed to show a patentable distinction between them and their (granted) independent substitute claims (i.e., Scenario 3).
| Challenged | Proposed Substitutes | Board’s View |
| Claim 4(1) | Claim 13 | patentable (parent substitute) |
| Claim 3(1) | Claim 14(13) | not patentably distinct over claim 13 (Scenario 3); also is a second proposed substitute claim for claim 4 (Scenario 1) |
If the Patent Owner had not added an additional feature to claim 14 or had added that feature to claim 13 instead, then claim 14 seemingly would have been granted (Scenario 2).
The Riverbed decisions reveal that, in the Board’s view, the presence of a new feature in a dependent substitute claim, which (1) is not included in the original claim, (2) is not included in the parent substitute claim, and (3) does not render the claim patentably distinct from the parent substitute claim, means that (a) the claim does not respond to a ground of unpatentability but also (b) amounts to an improper second proposed substitute claim with the parent substitute claim viewed as the first substitute (i.e., Scenario 1).
Contacts
- Anthony A. Hartmann
- Of Counsel
- Washington, DC
- +1 202 408 4275
Copyright © 2015 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.