Corning Optical v. PPC Broadband (IPR2014-00441): Guidance after a Conference to Confer on Amendment

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 (entered October 30, 2014), is a short order issued after a conference call the patent owner requested to satisfy the then-required duty to confer before filing a motion to amend. The panel gave oral guidance on the call, with a court reporter present, and then summarized it in writing. The result is a compact checklist of how the Board approached motions to amend in 2014.

Background

PPC, the patent owner, planned to move to amend in this inter partes review. It initiated a call under 37 C.F.R. § 42.121(a). On the call it also asked how to handle written description support for substitute claims that would claim the benefit of a chain of earlier continuation applications with the same disclosure.

The Board found that the conferring requirement had been met. It also authorized PPC to place its proposed substitute claims in an appendix so that they would not count against the page limit then applicable to a motion to amend.

What the Board decided

The order restated several requirements, citing Idle Free, Nichia and another early decision.

• Cancellation versus substitution. A request to cancel claims is not treated as contingent. A request to substitute claims always is: a substitute claim is considered only if the original claim it replaces is found unpatentable or is cancelled.
• Traceability. The presumption is one substitute claim per original claim, assessed claim by claim, not by keeping the total count the same. A substitute claim should include all features of the claim it replaces. More than one substitute claim for a given original claim requires a special circumstance.
• Claim listing and markup. Each substitute claim must appear in a claim listing with a new number, and the changes from the original claim should be shown clearly, for example with brackets and underlining.
• Written description for the whole claim. Support should be cited in the application as filed, not the issued patent, and for the entire claim rather than only the added feature.
• Claim construction. New terms likely to be disputed should be construed in the motion, and a means-plus-function element should be tied to its corresponding structure. Saying a term has its plain meaning, without stating that meaning, is not helpful.
• Patentability in general. Because granted substitute claims enter the patent without examination, the Board said the patent owner must show patentability over the prior art in general, not only over the petitioner’s references. The motion should discuss what was known about the added feature and the specific technical knowledge of a skilled person, while the patent owner was not expected to know everything a hypothetical skilled person is presumed to know.

On the priority question, the Board suggested a practical route. The patent owner could file each application in the chain as an exhibit, seek a stipulation that each has the same substantive disclosure as the application that issued as the patent, and say so in the motion. In that situation it could cite only the application that issued as the patent. It would still have to show co-pendency and common inventorship under 35 U.S.C. § 120 for each earlier application.

Why it matters

Much of this checklist reflects requirements that still exist in some form: substitute claims must respond to a ground of unpatentability, must not broaden the claims or add new matter (35 U.S.C. § 316(d)(3)), and must be supported by the original disclosure. The priority-chain suggestion is a sensible way to avoid burying the Board in duplicate citations. For context, see amending patent claims during inter partes review.

Later developments

The order’s statement that the patent owner must prove patentability over the prior art in general reflects early Board practice that no longer applies. In Aqua Products, Inc. v. Matal (Fed. Cir. 2017) (en banc), the Federal Circuit held that the patent owner does not bear the burden of persuasion on the patentability of substitute claims. In 2019 the Board designated Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15, precedential as motion-to-amend guidance, and the earlier Idle Free and MasterImage guidance was de-designated. The USPTO later adopted motion-to-amend procedures by rule, and length limits have also changed; readers should check current 37 C.F.R. § 42.121 and § 42.24. Designations can change, so check the USPTO’s list of precedential and informative decisions.

Key takeaways

• The Board confirmed that a call requested for the purpose satisfied the duty to confer.
• Cancellation is unconditional; substitution is always contingent on the original claim falling.
• Each substitute claim must be traceable to, and include all features of, the claim it replaces.
• Written description support must be shown for the whole claim in the application as filed.
• The burden of proving patentability that the order describes was later rejected by Aqua Products.