LaRose Indus., LLC v. Capriola Corp.
Addressing issues of claim construction and the requirements of a motion to amend, the Patent Trial and Appeal Board (the Board) ordered the claims at issue were unpatentable and denied a motion to amend. The Board concluded that the patent owner had not sufficiently distinguished the proposed amended claims over the prior art. LaRose Indus., LLC v. Capriola Corp., Case No. IPR2013-00120 (PTAB, June 26, 2014) (Arpin, APJ).
LaRose filed a petition challenging the claims of Capriola’s patent relating to building blocks of various shapes that also incorporate a variety of colored lights. The Board found that all of the challenged claims were obvious over various prior art references. Capriola, the patent owner, filed a motion to amend that included a motion to exclude evidence. However, Capriola elected not to file a patent-owner response to the institution, despite the Board’s warning that by doing so, Capriola would waive any arguments for patentablility as to its issued claims. In its final decision, the Board denied Capriola’s motion to amend and dismissed the motion to exclude evidence as moot.
Neither party challenged the Board’s initial interpretation of terms of the issued claims or its proposed constructions for any of the language added by Capriola in its motion to amend. The Board provided constructions for “non-conductive,” “cylindrical” and “at any degree of rotation.” Turning to Capriola’s motion to amend, the Board emphasized that an inter partes review (IPR) is more in the nature of an adjudicatory proceeding than an examination, explaining that if a patent owner seeks to amend by substituting different claims, the patent owner bears the burden of demonstrating the patentability of the proposed claims.
The Board concluded that the amended claims did not improperly enlarge the scope of the original claims or introduce new subject matter. The Board further found that the amended claims were supported by the written description in the manner required by § 112 and even found the new claims to be definite under the Nautilus standard. (IP Update, Vol. 17, No. 6) The Board even found that the patent owner, in its motion, adequately responded to the grounds of unpatentability upon which the trial was instituted.
However, the Board did not agree that the patent owner had established patentability of the proposed claims over prior art known to the patent owner (i.e., prior art beyond the art of record in the IPR). The Board explained that unlike an examiner, the Board neither allows nor rejects claims. Rather, it only enters proposed claims as a form of relief where the patent owner has proven itself entitled to such relief. In this case, the Board noted Capriola failed to discuss either the level of ordinary skill in the art or any prior art beyond the art of record, criticizing patent owner’s showing as containing “only conclusory remarks with respect to [references beyond those relied on in the petition] or combinations of references raised in Petitioner’s opposition to the motion to amend …”