By Matthew L. Cutler, Principal
Old habits are hard to break. Patent attorneys love to put forth every argument in their arsenal and let the chips fall where they may. Problem is, Congress set up inter partes review procedures to ensure a just, efficient and inexpensive resolution to the patentability of challenged patents. To that end, Patent Office regulations require a maximum, 60-page limit for the Petition. To get around this limit, Petitioners are increasingly seeking to stash a large portion of their arguments in an expert report that accompanies the Petition. In this way, citations in the Petition to these lengthy declarations are intended to allow Petitioners to include all of their arguments in their filing, but still stay within the 60-page limit for a Petition. Problem is…..the PTAB recognizes this technique for what it is – a way around the page limit. Numerous Petitions have now been denied as failing to comply with the page limit because Petitioner’s arguments are not contained “within the Petition.” 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if…(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim…”).
This scenario was presented in Fidelity National Information Services, Inc., v. DataTreasury Corp., IPR2014-00489, involving US Pat. No. 5,910,988. Petitioner asserted seven grounds of unpatentability and provided a claim-by-claim analysis to show all limitations taught or suggested in the art. Throughout the petition, Petitioner cited to a declaration by an expert that spanned nearly 300 pages and further comprised a 1,003-page, single-spaced claim chart labeled as Exhibit A. The claim chart also incorporated the prior art references themselves.
The Board found that Petitioner used this system of multi-level incorporation to circumvent the page limit requirements of the petition. Within each ground, Patent Challenger used only a few pages of the actual petition to essentially incorporate many more pages of arguments by citation to the declaration, which further cited to the claim chart.
Under 37 C.F.R. § 42.22(a)(2), a petition for inter partes review must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” In view of this requirement, the Board ignored much of Petitioner’s arguments, as they were contained in the declaration and claim chart, not the Petition itself. As such, the Petition lacked sufficient citation to the references themselves to support the asserted grounds of unpatentability and the Board denied the petition.
UPDATE: Petitioner’s Motion for Rehearing was denied on October 9, 2014.