November 5, 2014

Conclusory Arguments Plus Citation to KSR Insufficient to Institute IPR

By Matthew L. Cutler, Principal

The Board has instructed, time and again, that a Petition for Inter Partes Review must tell a story. Mere conclusory attorney argument, or conclusory statements from an expert, are not sufficient to carry the burden of demonstrating the unpatentability of a challenged claim. This lesson was learned again, the hard way, by a Petitioner in Bear Archery, Inc. v. AMS, LLC, IPR2014-00700, involving US Pat. No. 6,517,453, where the Board addressed a weak conclusory argument by Petitioner. The Board found that Petitioner’s unsupported, conclusory arguments, even when combined with citation to the KSR decision, was not enough to meet the reasonable likelihood of success standard to institute an inter partes review trial.

The ‘453 patent relates generally to a bowfishing bow and arrow and, of particular interest, is a ring component which acts like a slide.  A further key limitation of the ‘453 invention is a “slide stop” mounted on the end of the arrow.

Patent Challenger’s arguments essentially consisted of simply using KSR language to say that it “would have been a matter of merely using routine skill for a predictable result” to substitute disclosures of components of two supplementary references for components in the primary reference in order to describe the slide and slide stop claimed in the ‘453 patent.  No further support for combining the references was given by Petitioner, and the Board explained in detail the reasons why one of skill would have not have been motivated to combine the references.  See, e.g., Order at 10.

Accordingly, the Board was unpersuaded by Patent Challenger’s undercooked arguments, and denied the petition for inter partes review.