Another Motion to Amend Denied in IPR Final Written Decision

by Harness, Dickey & Pierce, PLC
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iStock_000016813098XSmallWhile Patent Owners have finally succeeded in having claims survive an inter partes review proceeding, no Patent Owner has yet to find the magic formula that successfully navigates a motion to amend.  In a Final Written Decision in Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00016 (Paper 32), the Board again denied Patent Owner’s motion to amend, finding that the high burden for inherent in such motions was not met.

The case arrived at its conclusion with an interesting posture.  Patent Owner previously had conceded that the six claims challenged in the Petition were unpatentable and they were, therefore, cancelled.  Instead of fighting for those claims, Patent Owner filed a motion to amend the six challenged claims.  Petitioner opposed the motion, but then entered into a settlement agreement with Patent Owner.  In light of the advanced stage of the proceeding, however, the motion to terminate the proceeding was granted with respect to Petitioner, but not with respect to Patent Owner and the proceeding went to a Final Written Decision.

Turning to the merits of the motion to amend, the Board found four faults in Patent Owner’s motion.  First, the Board found that Patent Owner failed to set forth a reasonable claim construction for each claim feature added.  Importantly, Patent Owner did provide a claim construction, supported by expert testimony, but in the Board’s view, it was unreasonable.  Order at 12-15.  Second, the Board found that Patent Owner’s amendment did not respond to a ground of unpatentability.  In its proposed amended claims, Patent Owner eliminated all of the features of several original claims.  For example, instead of adding limitations to those claims, it deleted the material language in its entirety and substituted new language that “has little to do” with the language of the original claim.  Order at 15-18.

Third, the Board found that Patent Owner’s motion did not present a reasonable number of claims.  In general, the Board found that the proposed substitute claims did not correspond to their original claims but were, instead, all proposed substitute claims for the independent claim at issue.  Because Patent Owner did not provide a reasonable explanation as to why five substitute claims were required for one challenged claim, this formed an independent ground for denying the motion.  Lastly, even in light of the above, the Board further found that Patent Owner had failed to demonstrate patentability of the new claims over the prior art.  Citing many of the now familiar concepts from the Idle Free decision, the Board determined that: 1) because Patent Owner limited its discussion to references cited in the petition, 2) did not discuss the level of ordinary skill in the art, and 3) did not discuss what was previously known regarding the added features, the motion to amend should be denied.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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