- PTAB · Mar 8, 2016 · IPR2014-01441 · APJ James B Arpin · IPR · Final written decision
The Board canceled claims 48, 50–53, and 60–69, but denied entry of substitute claims 70–84 for inadequate written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“(1) cancellation of challenged claims 48, 50–53, and 60–69 of the ’681 patent and (2) entry of substitute claims 70–84. Mot. 1, 25; see supra Section I.D. As the moving party, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. Nike, 2016 WL 537609, at *3–*5 (“[T]he Board did not err by placing the burden on [Patent Owner] to establish patentability over the prior art of [Patent Owner]’s proposed substitute claims.”); see Idle Free, Case IPR2012-00027, slip op. at 7–8 (Paper 26).” slip op. at 31
- ScopeDecided for patent owner
“A patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to an alleged ground of unpatentability. A proper substitute claim under 37 C.F.R. § 42.121(a)(2)(i) must only narrow the scope of the challenged claim it replaces. Similarly, under 37 C.F.R. § 42.121(a)(2)(ii), a substitute claim may not enlarge the scope of the challenged claim it replaces by eliminating any feature. Idle Free, Case IPR2012-00027, slip op. at 5 (Paper 26). As noted above, in its Motion to Amend, Patent Owner proposes independent claim 70 as a substitute for independent claim 48, independent claim 75 as a substitute for independent claim 60, and independent claim 80 as a substitute for claim 65. Mot. 2–7. Each substitute claim includes all of the limitations of the corresponding challenged claim, for which it is a substitute, and only adds additional limitations. No limitations are removed. In its Opposition, Petitioner does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the cancelled, challenged claims of the ’681 patent. Opp. 1, 11. The substitute dependent claims are similarly narrowed by the limitations added to the independent claims, from which they depend. Consequently, the proposed substitute claims do not enlarge the scope of the challenged claims.” slip op. at 33
- 112 supportDenied
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” In Nichia, “[t]he Board also explained that merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4 (Paper 27) (emphasis in original). Moreover, the Board recognized that the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Id. (emphasis in original). Whether a patent claim is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“strongest evidence for construing the term “optical gain” comes from the Specification itself, which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (citations omitted) (internal quotation marks omitted; emphasis added); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification). Given the plain language of the claims, in particular the emphasis on “optical”; the testimony of the parties’ declarants, and the clear definition of the Specification, we are not persuaded here by Patent Owner’s argument that all disclosed embodiments should be embraced by our construction. “It is not necessary that each claim read on every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Broadcom Corp.” slip op. at 27
Claim constructioncites Phillips
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.