In response to patent owner’s request to file a motion to amend a motion to amend made approximately one month before oral hearing, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) denied patent owner’s motion, finding that an additional motion to amend would delay the proceeding, in which all evidence has been presented and oral hearing is about to occur.  Tandus Flooring, Inc. v. Interface, Inc., Case No. IPR2013-00333 (PTAB, Aug. 8, 2014) (McNamara, APJ).

The patent owner, Interface, requested a conference to discuss obtaining authorization to supplement its previously filed motion to amend claims to expressly claim priority to an earlier filed patent application and to identify support for the subject matter of the substitute claims in that application.  Interface argued that the earlier filed patent application has the exact same disclosure as the later application that was originally cited in support of the proposed amended claims in the original motion to amend.  The petitioner, Tandus Flooring, opposed the request, arguing that none of the considerations for authorizing an additional motion to amend are present, such as identification of supplemental information not known to patent owner when it filed its original motion to amend.

The Board did not authorize patent owner to file an additional motion to amend.  The Board found that the additional motion would delay the proceeding, citing to the fact that all evidence had been presented and oral argument was about a month away.  In addition, the Board found that patent owner’s proposed additional motion to amend would have no effect on the outcome of the proceeding because the patent owner’s failure to claim support from the earlier disclosure does not change the fact that the later application is a continuation of the earlier application and is therefore entitled to the priority date afforded the earlier application under § 120. 

The Board explained that the disclosure in the earlier application is not available as prior art to the later application and that analysis of the original motion to amend will consider whether the later application supports a conclusion that the patent owner possessed the invention in the proposed amended claims as of the filing date of the later application under 35 U.S.C. § 112.