Lectrosonics, Inc. v. Zaxcom, Inc.

Trials@uspto.gov
571-272-7822
Paper No. 15
Entered: February 25, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
LECTROSONICS, INC.,
Petitioner,
v.
ZAXCOM, INC.,
Patent Owner.
____________
Case IPR2018-01129 (Patent 7,929,902 B2)
Case IPR2018-01130 (Patent 8,385,814 B2)1
____________
Before SCOTT R. BOALICK, Acting Chief Administrative Patent Judge,
KALYAN K. DESHPANDE and LYNNE E. PETTIGREW, Administrative
Patent Judges.
DESHPANDE, Administrative Patent Judge.
ORDER
Information and Guidance on Motions to Amend
37 C.F.R. § 42.5
1 This Order applies to each of the listed cases. The parties are not
authorized to use a multiple case caption.

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This Order provides information and guidance regarding motions to
amend. This information is being provided as general guidance only, and
should not be interpreted as a suggestion or request for Patent Owner to file
a motion to amend. If Patent Owner chooses to file a motion to amend,
Patent Owner still must confer with the Board regarding the motion to
amend. 37 C.F.R. § 42.121(a). Unless the parties stipulate otherwise, a
motion to amend must be filed by DUE DATE 1 as set forth in the
Scheduling Order.
As provided by Congress, a patent owner is entitled to file a motion to
amend in an inter partes review. Specifically, 35 U.S.C. § 316(d) states:
(d) Amendment of the Patent. –
(1) IN GENERAL. – During an inter partes review instituted
under this chapter, the patent owner may file 1 motion to amend the
patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a reasonable number of
substitute claims.
* * * *
(3) SCOPE OF CLAIMS. – An amendment under this
subsection may not enlarge the scope of the claims of the patent or
introduce new matter.
Congress also authorized the Director to set forth “standards and
procedures” for allowing a patent owner to move to amend, to cancel a
challenged claim, or propose a reasonable number of substitute claims.
35 U.S.C. § 316(a)(9). The regulation directed to filing a motion to amend
claims in an inter partes review is 37 C.F.R. § 42.121.

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1. Contingent Motions to Amend
A motion to amend claims may cancel claims and/or propose
substitute claims. 35 U.S.C. § 316(d)(1); 37 C.F.R. § 42.121(a)(3). A
request to cancel claims will not be regarded as contingent. However, a
request to substitute claims ordinarily will be treated as contingent. In other
words, a proposed substitute claim normally will be considered only if a
preponderance of the evidence establishes that the original patent claim that
it replaces is unpatentable. A patent owner should adopt a claim-by-claim
approach to specifying the contingency of substitution, e.g., which claim is
to be substituted for which claim, and under what circumstances.
2. Burden of Persuasion
In October 2017, the U.S. Court of Appeals for the Federal Circuit
issued an en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290
(Fed. Cir. 2017) (“Aqua Products”), addressing the burden of persuasion that
the Board applies when considering the patentability of substitute claims
presented in a motion to amend. In November 2017, the Board issued a
memorandum providing further guidance on motions to amend in view of
that decision. See Memorandum “Guidance on Motions to Amend in view
of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/
files/documents/guidance_on_motions_to_amend_11_2017.pdf) (“Board’s
Memorandum”). Subsequent to the issuance of Aqua Products and the
Board’s Memorandum, the Federal Circuit issued a decision in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up Order amending that decision on
rehearing. See Bosch Auto. Serv. Sols., LLC v. Iancu, Order on Petition for
Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018).

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In accordance with Aqua Products, the Board’s Memorandum, and
Bosch, a patent owner does not bear the burden of persuasion to demonstrate
the patentability of substitute claims presented in a motion to amend.
Rather, as a result of the current state of the law and USPTO rules and
guidance, the burden of persuasion ordinarily will lie with the petitioner to
show that any proposed substitute claims are unpatentable by a
preponderance of the evidence. The Board itself also may justify any
finding of unpatentability by reference to evidence of record in the
proceeding, for example, when a petitioner ceases to participate, as further
noted in Aqua Products and Bosch. Bosch, 878 F.3d at 1040 (citing Aqua
Products, 872 F.3d at 1311 (O’Malley, J.)). Thus, the Board determines
whether substitute claims are unpatentable by a preponderance of the
evidence based on the entirety of the record, including any opposition made
by the petitioner.
Before considering the patentability of any substitute claims, however,
the Board first must determine whether the motion to amend meets the
statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and
37 C.F.R. § 42.121. Those requirements and other guidance are discussed
below.
3. Reasonable Number of Substitute Claims
By statute, in a motion to amend, a patent owner may cancel
challenged claims or propose a reasonable number of substitute claims for
each challenged claim. 35 U.S.C. § 316(d)(1)(B). There is a rebuttable
presumption that a reasonable number of substitute claims per challenged
claim is one (1) substitute claim. 37 C.F.R. § 42.121(a)(3). A patent owner
may rebut this presumption upon demonstration of a need to present more

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than one substitute claim per challenged claim. Id. (“A motion to amend
may cancel a challenged claim or propose a reasonable number of substitute
claims. The presumption is that only one substitute claim would be needed
to replace each challenged claim, and it may be rebutted by a demonstration
of need.”). Thus, to the extent a patent owner seeks to propose more than
one substitute claim for each cancelled claim, the patent owner should
explain in the motion to amend the need for the additional claims and why
the number of proposed substitute claims is reasonable.
The determination of whether the number of proposed substitute
claims is reasonable is made on a claim-by-claim basis, consistent with the
statutory language that refers to a reasonable number of substitute claims for
“each” challenged claim. 35 U.S.C. § 316(d)(1)(B); 37 C.F.R.
§ 42.121(a)(3). To help the Board determine whether a motion to amend
meets the requirement, the motion should, for each proposed substitute
claim, specifically identify the challenged claim that it is intended to replace.
All proposed claims should be traceable to an original challenged claim as a
proposed substitute claim for that challenged claim.
4. Respond to a Ground of Unpatentability Involved in the Trial
37 C.F.R. § 42.121(a)(2)(i) states that “[a] motion to amend may be
denied where . . . [t]he amendment does not respond to a ground of
unpatentability involved in the trial.” Thus, in considering the motion, we
review the entirety of the record to determine whether a patent owner’s
amendments respond to a ground of unpatentability involved in the trial.
The rule does not require, however, that every word added to or removed
from a claim in a motion to amend be solely for the purpose of overcoming
an instituted ground. Additional modifications that address potential

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35 U.S.C. § 101 or § 112 issues, for example, are not precluded by rule or
statute. Thus, once a proposed claim includes amendments to address a
prior art ground in the trial, a patent owner also may include additional
limitations to address potential § 101 or § 112 issues, if necessary. Allowing
an amendment to address such issues, when a given claim is being amended
already in view of a 35 U.S.C. § 102 or § 103 ground, serves the public
interest by helping to ensure the patentability of amended claims. See
Veeam Software Corp. v. Veritas Techs., LLC, Case IPR2014-00090, slip op.
at 26–29 (PTAB July 17, 2017) (Paper 48). In addition, allowing such
amendments helps ensure a “just” resolution of the proceeding and fairness
to all parties. 37 C.F.R. § 42.1(b).
5. Scope of the Claims
A motion to amend may not present substitute claims that enlarge the
scope of the claims of the challenged patent or introduce new subject matter.
See 35 U.S.C. § 316(d)(3) (“An amendment . . . may not enlarge the scope of
the claims of the patent or introduce new matter.”); see also 37 C.F.R.
§ 42.121(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he
amendment seeks to enlarge the scope of the claims of the patent or
introduce new subject matter.”).
a. No enlargement
A patent owner may not seek to broaden a challenged claim in any
respect that enlarges the scope of the claims of the patent, for example, in
the name of responding to an alleged ground of unpatentability. Likewise, a
proposed substitute claim may not remove a feature of the claim in a manner
that broadens the scope of the claims of the challenged patent. A substitute
claim will meet the requirements of § 42.121(a)(2)(i) and (ii) if it narrows

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the scope of at least one claim of the patent, for example, the challenged
claim it replaces, in a way that is responsive to a ground of unpatentability
involved in the trial. In addition, a proposed substitute claim adding a novel
and nonobvious feature or combination to avoid the prior art in an instituted
ground of unpatentability will not enlarge the scope of the claims of the
patent.
b. No new matter
New matter is any addition to the claims without support in the
original disclosure. See TurboCare Div. of Demag Delaval Turbomach. v.
Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001) (“When [an] applicant
adds a claim . . . the new claim[] . . . must find support in the original
specification.”). Normally, a claim element without support in the original
disclosure (i.e., the application as originally filed) merits a rejection under
35 U.S.C. § 112 for lack of written description support. See, e.g., In re
Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981) (“The proper basis for
rejection of a claim amended to recite elements thought to be without
support in the original disclosure, therefore, is § 112, first paragraph . . . .”).
Thus, the Board requires that a motion to amend set forth written
description support in the originally filed disclosure of the subject patent for
each proposed substitute claim, and also set forth support in an earlier filed
disclosure for each claim for which benefit of the filing date of the earlier
filed disclosure is sought. See 37 C.F.R. §§ 42.121(b)(1), 42.121(b)(2). If a
petitioner, in an opposition to a motion to amend, raises an issue of priority
of a proposed substitute claim, for example, based on art identified in the
opposition, the patent owner may respond in a reply to the opposition.

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Importantly, to meet this requirement, citation should be made to the
original disclosure of the application, as filed, rather than to the patent as
issued. The written description support must be set forth in the motion to
amend itself, not the claim listing (discussed below). See MLB Advanced
Media, L.P. v. Front Row Techs., LLC, Case IPR2017-01127, slip op. at 2–4
(PTAB Jan. 16, 2018) (Paper 24). In addition, the motion must set forth
written description support for each proposed substitute claim as a whole,
and not just the features added by the amendment. This applies equally to
independent claims and dependent claims, even if the only amendment to a
dependent claim is in the identification of the claim from which it depends.
6. Claim Listing
A motion to amend must include a claim listing reproducing each
proposed substitute claim. See 37 C.F.R. § 42.121(b). Any claim with a
changed scope subsequent to the amendment should be included in the claim
listing as a proposed substitute claim, and should have a new claim number.
This includes any dependent claim that a patent owner intends to be
depending from a proposed substitute independent claim. For each proposed
substitute claim, the motion must show clearly the changes in the proposed
substitute claim with respect to the original patent claim that it is intended to
replace. No particular form is required, but use of brackets to indicate
deleted text and underlining to indicate inserted text is strongly suggested.
The claim listing may be filed as an appendix to the motion to amend,
and shall not count toward the page limit for the motion. The appendix,
however, shall not contain any substantive briefing. All arguments and
evidence in support of the motion to amend shall be in the motion itself.

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7. Default Page Limits and Submitted Evidence
The page limits set forth in the rules apply. A motion to amend, as
well as any opposition to the motion, is limited to twenty-five pages. See
37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3). A patent owner’s reply is limited to
twelve pages. See 37 C.F.R. § 42.24(c)(3). A petitioner’s sur-reply is
limited to twelve pages. See Office Patent Trial Practice Guide, August
2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (“Trial Practice Guide
Update”), Appendix A, 5, available at https://go.usa.gov/xEEux (last visited
Feb. 20, 2019). The parties may contact the Board to request additional
pages or briefing.
A petitioner may submit additional testimony and evidence with an
opposition to the motion to amend, and a patent owner may do likewise with
a reply. Generally, a reply or sur-reply may only respond to arguments
raised in the preceding brief. Trial Practice Guide Update, 15. A
petitioner’s sur-reply may not be accompanied by new evidence other than
deposition transcripts of the cross-examination of any reply witness. Id. at
14. A petitioner’s sur-reply should only respond to arguments made in a
reply, comment on reply declaration testimony, or point to cross-
examination testimony. Id. Deadlines to submit any motion to amend,
opposition, reply, sur-reply, or additional briefing may be stipulated by the
parties, to the extent permitted by the instructions set forth in the Scheduling
Order.
8. Duty of Candor
Under 37 C.F.R. § 42.11, all parties have a duty of candor, which
includes a patent owner’s duty to disclose to the Board information of which
the patent owner is aware that is material to the patentability of substitute

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claims, if such information is not already of record in the case. When
considering the duty of candor in connection with a proposed amendment, a
patent owner should consider each added limitation. Information about an
added limitation may be material even if it does not include the rest of the
claim limitations.
Likewise, a petitioner should keep in mind that it has a duty of candor
in relation to relevant information that is inconsistent with a position
advanced by the petitioner during the proceeding. Cf. 37 C.F.R.
§ 42.51(b)(iii). For example, such information could include objective
evidence of non-obviousness of proposed substitute claims, if a petitioner is
aware that such evidence is inconsistent with a position it has advanced
during the proceeding, and the evidence is not already of record in the case.
9. Other General Information
Additional information concerning motions to amend is published in
the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67
(Aug. 14, 2012), and the Trial Practice Guide Update, 5˗8, 14˗15.

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PETITIONER:
C. Brandon Rash
Cory C. Bell
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Lectrosonics-IPR@finnegan.com
brandon.rash@finnegan.com
cory.bell@finnegan.com
Deborah Peacock
Justin Muehlmeyer
PEACOCK LAW P.C.
dpeacock@peacocklaw.com
jmuehlmeyer@peacocklaw.com
PATENT OWNER:
Dr. Gregory J. Gonsalves
GONSALVES LAW
gonsalves@gonsalveslawfirm.com
Rita C. Chipperson
CHIPPERSON LAW GROUP, P.C.
rcc@chippersonlaw.com