The Patent Trial and Appeal Board expanded its listing of representative decisions on motions to amend to include an Order from Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441. Paper 19 (Oct. 30, 2014). In that Order, the PTAB provided the Patent Owner with guidance regarding the requirements for a motion to amend. Corning Optical repeats and to an extent clarifies the guidance found in the Trial Practice Guide and earlier-identified representative decisions on motions to amend.
For example, Corning Optical addressed the requirement to show changes made by the proposed amendment. While no particular form is required, Corning Optical advised the use of brackets and underlining, which is consistent with amendment practice in ex parte and inter partesreexaminations and reissue proceedings. See 37 C.F.R. §§ 1.173 & 1.530.
With respect to the written description requirement, which was addressed by Nichia Corp. v. Emcore Corp., IPR2012-000005, Paper 27 (June 3, 2013), Corning Optical clarified that the Patent Owner must address all claim limitations and not just those added or modified by amendment. Corning Optical also provided additional guidance as to when a Patent Owner needs to show entitlement to an earlier filing date. Where the priority application(s) have identical substantive disclosures as the as-filed application, a Patent Owner should attempt to obtain a stipulation from Petitioner to that effect. Then, the Patent Owner will only need to cite to the as-filed application that issued as the patent.
Following the advice in Idle Free Sys., Inc., v. Berstrom, Inc., IPR202-00027, Paper 66 (Jan. 7, 2014), Corning Optical addressed the requirement of providing a claim construction for new terms, whose meaning may be in dispute. In particular, the PTAB advised that stating the plain and ordinary meaning applied would be insufficient. Rather, a Patent Owner should address what the plain and ordinary meaning is and provide supporting evidence. Corning Optical further advises that when addressing the significance of the new features, Patent Owners should reveal “whether the feature was previously known anywhere, in whatever setting, and whether or not the features was known in combinations with any of the other elements in the claim.” Paper 19 at 4. Corning Opticalalso emphasized that it is not meaningful to identify the years of education or experience of one of ordinary skill but rather preferable to identify “whether there are textbooks or conventional practices . . . and what basic skill set would be possessed by one with ordinary skill in the art.” Paper 19 at 5.
Finally, Corning Optical provides some strategic advice for Patent Owners; request authorization to place the proposed substitute claims in an appendix, such that it does not count against the page limits.