Nichia v. Emcore (IPR2012-00005): Conferring and Written Description Support for Substitute Claims

Nichia Corp. v. Emcore Corp., IPR2012-00005, is another early inter partes review in which the Board used a conference-call order to explain motion-to-amend practice. The order, Paper 27, entered June 3, 2013, answered two questions: whether the patent owner had conferred with the Board before filing its motion, and how a patent owner should show written description support for proposed substitute claims.

Background

Emcore, the patent owner, filed a motion to amend (Paper 26). Nichia, the petitioner, asked whether Emcore had complied with the then-applicable requirement in 37 C.F.R. § 42.121(a) that a patent owner confer with the Board before filing such a motion. Emcore pointed to its list of proposed motions filed before the initial conference call, which included a motion to amend, and to the Board’s order after that call noting that Emcore might file one.

During the same call, Emcore asked whether citations to the issued patent, or to the provisional application to which the patent claimed benefit, would satisfy the requirement in § 42.121(b)(1) that a motion set out the support in the original disclosure for each substitute claim.

What the Board decided

Conferring. The Board found that Emcore had complied. It explained that the purpose of conferring is to let the patent owner get guidance before investing in a motion that might be denied, for example for proposing an unreasonable number of substitute claims or an amendment that does not respond to a ground of unpatentability. The patent owner does not need to present a fully developed claim set when it confers.

Written description. The Board then gave guidance that went beyond the dispute in front of it:

• The test is whether the original disclosure reasonably conveys to a skilled person that the inventor possessed the claimed subject matter as of the filing date, citing Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc).
• Support should therefore be shown in the application as originally filed, not in the issued patent, unless the motion states that the disclosure did not change when the patent issued.
• Citations to the provisional application go to a different requirement: support in an earlier-filed disclosure for which benefit is claimed (§ 42.121(b)(2)).
• Showing where each limitation appears separately may not show support for the claim as a whole. A bare cross-reference to several dependent claims, each depending separately from claim 1, was on its face inadequate.
• The claim language need not appear word for word in the disclosure, but if it does not, the motion should explain why a skilled person would recognize that the inventor possessed the combination claimed.

The Board also noted that an additional motion to amend may be authorized on a showing of good cause or on a joint request to advance settlement, under § 42.121(c).

Why it matters

The order is a practical reminder that a motion to amend is judged on its own papers. Substitute claims combine features from different parts of the disclosure, and a motion that only lists citations leaves the Board to do the analysis. The distinction between the application as filed, the issued patent and any priority document reflects ordinary written description law under 35 U.S.C. § 112(a), and it applies with full force to substitute claims because 35 U.S.C. § 316(d)(3) bars amendments that introduce new matter. For a broader overview, see amending patent claims during inter partes review.

Later developments

Motion-to-amend practice has changed considerably since 2013. 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 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 earlier guidance such as Idle Free was de-designated. The USPTO later adopted motion-to-amend procedures by rule. Readers should check the current text of 37 C.F.R. § 42.121, including how the duty to confer now works, and the USPTO’s current list of precedential and informative decisions.

Key takeaways

• Listing a motion to amend before the initial conference call and mentioning it on the call satisfied the duty to confer in this case.
• Written description support for substitute claims should be shown in the original application as filed.
• Citations to a provisional application address benefit of an earlier date, a separate requirement.
• Support must be shown for each substitute claim as a whole, with explanation where the language is not verbatim.