Responding to Preliminary Guidance Is the Core Purpose of the MTA Pilot Program

ZYXEL COMMUNICATIONS CORP. v. UNM RAINFOREST INNOVATIONS

Before Dyk, Prost, and Stark. Appeal from the Patent Trial and Appeal Board.

Summary: Because the PTAB’s MTA Pilot Program’s core purpose is to allow patent owners to address errors or deficiencies in motions to amend, the Board may exercise its discretion to allow reply briefing to correct such errors.

ZyXEL Communications Corp. (“ZyXEL”) petitioned for inter partes review (IPR) challenging claims of a patent owned by UNM Rainforest Innovation (“UNMRI”). After institution, UNMRI filed a contingent motion to amend and requested preliminary guidance from the Board pursuant to the Board’s MTA Pilot Program. In its preliminary guidance, the Board noted that the motion to amend failed to show written description support for all of the claim limitations in the proposed substitute claims. UNMRI could not address the deficiency in a revised motion to amend because such a motion requires new substitute claims to be presented. However, the Board allowed UNMRI to file a longer reply addressing the deficiency and further permitted ZyXEL to file a longer sur-reply. In its final written decision, the Board granted UNMRI’s motion to amend and relied on the written description support shown in UNMRI’s reply. ZyXEL appealed the Board’s decision granting UNMRI’s motion to amend, arguing that the motion to amend did not satisfy the requirement that the motion itself contain written description support for each claim limitation of the substitute claims.

The Federal Circuit affirmed the Board’s decision to grant UNMRI’s motion to amend, holding that allowing a reply brief to supply the missing information is consistent with the Board’s regulations since the purpose of the MTA Pilot Program is to allow patent owners to address and correct any errors or deficiencies identified in the Board’s preliminary guidance. Furthermore, even if allowing UNMRI’s reply brief to supply the missing information had been improper, the error would have been harmless since ZyXEL was aware of the written description arguments and had an opportunity to respond in its sur-reply. ZyXEL’s argument that it did not have the opportunity to submit expert testimony on the written description issue was unavailing because it did not ask the Board to allow expert testimony with its sur-reply, nor could ZyXEL identify any testimony it would have presented if given the opportunity.

Editor: Sean Murray