In Indeed, Inc. v. Career Destination Development, LLC, the PTAB denied the Petitioner’s request to file a motion to add the review of certain dependent claims under 35 U.S.C. §112, first paragraph, finding that the Petitioner did not present a “sufficient factual basis” to authorize the filing of the motion. CBM2014-00069 & CBM2014-00070, Paper 15 (Sep. 25, 2014).
The Petitioner sought to formally incorporate review of dependent claims 2-11 as encompassed by the PTAB’s review of independent claim 1 under 35 U.S.C. §112, first paragraph. During the initial conference call, Petitioner explained that it “accidentally neglected” to include the challenge to the dependent claims in its CBM petition. The Petitioner did not provide any authority, however, on why it should have been allowed to add challenges to claims to the CBM review on a basis not presented in the petition.
The PTAB found the Petitioner’s reasons insufficient, citing 35 U.S.C. § 322(a)(3), which requires that a petition “identif[y], in writing and with particularity, each claim challenged [and] the grounds on which the challenge to each claim is based.” In denying Petitioner’s request, the PTAB noted that the Petitioner could file a separate CBM petition challenging dependent claims 2-11 under 35 U.S.C. §112, first paragraph.
As this decision shows, it is important to include all desired challenges to a patent when filing a CBM petition, as the PTAB will probably not permit the addition of other challenges without a sufficient basis. However, challenges not included in an initial petition can be made via a subsequent petition that can potentially be joined with the initial case under 35 U.S.C. § 325.