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Fitch Even Client ContentGuard Wins Rare Grant of Motion to Amend in CBM Proceeding; Secures First-Ever Board Finding of No Intervening Rights

July 26, 2016

On June 21, 2016, the Patent Trial and Appeal Board (PTAB) issued its final written decisions in the joined CBM2015-00040 and CBM2015-00160 proceedings, finding three claims of Fitch Even client ContentGuard’s U.S. Patent No. 7,774,280 challenged by petitioners Google and Apple to be unpatentable. However, the PTAB granted ContentGuard’s contingent motion to amend the independent claim, finding the amended claim to be patentable. This is believed to be only the seventh time the PTAB has granted a motion to amend out of at least 146 attempts since the AIA post-issuance proceedings went into effect in September 2012.

The PTAB also granted ContentGuard’s further request for a finding that the amended claim is substantially identical in scope to the original claim within the meaning of 35 U.S.C. § 252, which is the statute that grants accused infringers the protection of “intervening rights” when an amendment is made during post-issuance proceedings that changes claim scope. ContentGuard’s amendment was limited to incorporating the definition of the claim term “meta-right” as it was construed by the District Court for the Eastern District of Texas. For this reason, the PTAB agreed with ContentGuard that the amended claim has substantially the same scope as it would have in district court litigation, which means that intervening rights should not apply to the amended version. This is believed to be the first time that the PTAB has granted such a request and that this strategy for amending claims without the risk of intervening rights has been successfully executed.

In late 2014, Apple and Google had filed a combination of 35 IPR and CBM petitions against nine patents from ContentGuard’s digital rights management patent portfolio. Five petitions were dismissed voluntarily before preliminary rulings by the PTAB and 29 were denied at the preliminary stage with no trial instituted. Of the 35 initial petitions, only CBM2015-00040 was instituted on a subset of the claims challenged. Subsequently, Apple filed an identical follow-on petition, CBM2015-00160, which was unopposed and joined with CBM2015-00040. With the PTAB’s final decisions in CBM2015-00040 and CBM2015-00160, all of the challenged ContentGuard claims across nine patents survived challenge, with one claim being amended.

ContentGuard was represented in these matters by Fitch Even attorneys Timothy P. Maloney, Thomas F. Lebens, Nicholas T. Peters, Paul B. Henkelmann, David A. Gosse, and Karen J. Wang.

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