Masterimage 3D, Inc. and Masterimage 3D Asia, LLC v. RealD Inc., Case IPR2015-00040 (July 15, 2015) (Paper 42)

Takeaway (1): In a Motion to Amend, the burden is on the patent owner to show patentable distinction over the prior art of record, where “prior art of record” refers to: (a) any material art in the prosecution history of the patent, (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review, and (c) any material art of record in any other proceeding before the Office involving the patent.

Takeaway (2): In a Motion to Amend, the burden is on the patent owner to also show patentable distinction over prior art known to the patent owner, where “prior art known to the patent owner” refers to no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.

Takeaway (3): In a Motion to Amend, once the patent owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to Petitioner.

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Takeaway (1):

In a Motion to Amend, the burden is on the patent owner to show patentable distinction over the prior art of record, where “prior art of record” refers to: (a) any material art in the prosecution history of the patent, (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review, and (c) any material art of record in any other proceeding before the Office involving the patent.

Takeaway (2):

In a Motion to Amend, the burden is on the patent owner to also show patentable distinction over prior art known to the patent owner, where “prior art known to the patent owner” refers to no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.

Takeaway (3):

In a Motion to Amend, once the patent owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to Petitioner. Continue reading “Masterimage 3D, Inc. and Masterimage 3D Asia, LLC v. RealD Inc., Case IPR2015-00040 (July 15, 2015) (Paper 42)”

Int’l Flavors & Fragrances Inc. v. The United States of America, Case IPR2013-00124 (May 20, 2014) (Paper 12)

Takeaway: In a motion to amend claims in IPR proceedings, a patent owner must adequately demonstrate the patentability of any proposed substitute claim over the prior art in general, and, as such, the patent owner should discuss, as well as present evidence, if appropriate, as to the level of ordinary skill in the art and what was known regarding the features being relied upon to demonstrate patentability of the proposed claims.

Click Here For Copy of Decision

Takeaway:

In a motion to amend claims in IPR proceedings, a patent owner must adequately demonstrate the patentability of any proposed substitute claim over the prior art in general, and, as such, the patent owner should discuss, as well as present evidence, if appropriate, as to the level of ordinary skill in the art and what was known regarding the features being relied upon to demonstrate patentability of the proposed claims. Continue reading “Int’l Flavors & Fragrances Inc. v. The United States of America, Case IPR2013-00124 (May 20, 2014) (Paper 12)”