Authored by Brian S. Mudge
In the brief history of AIA trials, the Board has granted only a handful of motions to amend — six at the time of the Supreme Court oral argument in Cuozzo. A recent decision by the Board has upped that number by one. The case, Google v. ContentGuard Holdings1, involved a motion to amend which also requested the Board’s opinion that the amended claim was substantially identical to the originally issued claim.
Key Takeaway: A patent owner who successfully amends a claim in an AIA trial can gain further advantage by also requesting a determination that the new claim is substantially identical to the original claim. With a new claim declared not only patentable but also of the same scope as the original claim, a patent owner can defeat arguments regarding intervening rights as to the amended claim.
Background: Google filed a CBM petition challenging CGH’s patent no. 7,774,280, which is directed to managing digital rights transfers. The PTAB granted the petition and instituted trial of claims 1, 5 and 11 of the ’280 patent. In addition to a patent owner’s response, CGH filed a motion to amend, which was contingent on a determination by the Board that original claim 1 is unpatentable. CGH’s motion to amend requested (conditionally) cancellation of claim 1 and replacement of claim 1 with new substitute claim 37. Claim 37 included the language of claim 1 and added a wherein clause that defined the term “meta-right” consistent with a district court interpretation. In its motion to amend, CGH also requested the Board to determine that new claim 37 was substantially identical to claim 1 in scope.
In the final written decision, the PTAB determined that all of the tried claims (including claim 1) were unpatentable under sections 102 and 103 in view of a prior art reference identified as Stefik. Thus, the motion to amend by CGH became ripe for consideration.
Motion to Amend Granted. Proposed substitute claim 37 included the following clause not present in claim 1: “wherein the meta-right is not itself a usage right because exercising the meta-right does not result in action to the content.” In considering the motion to amend, the PTAB evaluated the requirements set forth in the rules and the Board’s MasterImage 3D2 and Idle Free3 decisions.
First, the Board determined that the amendment responded to a ground of unpatentability involved in the trial. CGH argued that the added language was intended to overcome the grounds relating to the Stefik reference because the Board did not interpret “meta-right” as narrowly as CGH requested. Google argued that the amendment only made explicit what CGH contended was already implicit in the term meta-right and, thus, did not respond to a ground in the trial. But the PTAB rejected Google’s argument, agreeing with CGH that the added language was responsive to the trial grounds based on Stefik.
In its motion, CGH cited to supporting disclosure for new claim 37 in the patent application leading to the ’280 patent and its priority applications. Although Google argued that CGH failed to provide sufficient written description support, the PTAB again agreed with CGH. The Board found sufficient disclosure in the citations and parentheticals, and ruled that expert testimony was not required to establish written description support. In addition, the Board stated that the cited portions did not need to recite the added language verbatim.
As for patentability over the prior art, CGH argued that new claim 37 distinguished over not only the Stefik reference but also several other references contained in the record or identified in related litigation. In opposition, Google argued that claim 37 was unpatentable over Stefik, but did not argue unpatentability with respect to any of the other prior art references. With respect to anticipation, the parties’ dispute centered over whether Stefik disclosed a meta-right that was not a usage right. The Board agreed with CGH that Stefik only disclosed a meta-right that resulted in action to the content, thus falling outside of the definition set forth in the added wherein clause. Similarly, the PTAB agreed with CGH that new claim 37 was not obvious in view of Stefik, rejecting Google’s arguments that Stefik suggested the added feature to one of ordinary skill. In doing so, the Board disregarded testimony by Google’s expert that was not adequately presented in the opposition because it was an improper attempt at incorporation by reference.
Amended Claim Substantially Identical to Original Claim. According to the PTO’s Patent Trial Practice Guide, a patent owner may, with its motion to amend, ask the Board to determine that the scope of a substitute claim is substantially identical to the original claim as it would be interpreted by a district court. This allows a patent owner to establish that an amended claim is effectively the same scope as the original claim for purposes of section 252.
Here, CGH made such a request in its motion to amend, contending that substitute claim 37 merely added a wherein clause that incorporated into the claim the definition of “meta-right” as construed by a district court in litigation. In support, CGH introduced a district court’s claim construction order determining that “meta-right” means “a right that, when exercised, creates or disposes of usage rights (or other meta-rights) but that is not itself a usage right because exercising a meta-right does not result in action to content.” Google opposed the request because the amended claim was narrower than the scope of original claim 1 — as interpreted by the Board using the broadest reasonable interpretation; Google did not dispute the correctness of the claim interpretation. However, the PTAB agreed with CGH that, for purposes of this analysis under section 252, the focus was on how the original claim would be interpreted by a district court, not how it would be interpreted using BRI. Because CGH provided sufficient support for its position — the district court’s claim construction order — the Board ruled that amended claim 37 was substantially identical in scope to original claim 1 for purposes of section 252. In its ruling, the Board noted that additional language added to the claim did not change the scope but merely provided antecedent basis for the newly-added feature in the wherein clause.
By calling upon the Board’s authority to make a section 252 determination for substitute claims, patent owners who successfully amend claims in an AIA trial can, in situations like those presented in this case, gain further advantage in returning to litigation after the trial. With a new claim declared not only patentable but also of the same scope as the original claim, a patent owner can defeat arguments regarding intervening rights as to the amended claim.
1Google Inc. v. ContentGuard Holdings, Inc., CBM2015-00040, paper 34 (PTAB June 21, 2016).
2MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, paper 42 (PTAB July 15, 2015).
3Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, paper 26 (PTAB June 11, 2013).
4Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).