Authored by Michelle Carniaux
Fitting a petition for inter partes review (“IPR”) into 60 pages as required by the Rules can sometimes be a challenge, particularly given the formatting requirements for such petitions (e.g., double spacing, 14-point font, etc.). See 37 C.F.R. 42.24(a)(i), 42.6(a). While a petitioner can move to waive the page limit, the petitioner must show in the motion how a waiver of the page limit is in the interests of justice. 37 CF.R. 42.24(a)(2). For the motions the PTAB has considered thus far, the PTAB has yet to find that a petitioner has met the “interests of justice” burden. Thus, alternative approaches to dealing with the page limits may need to be considered.
Multiple Petitions Directed to Subsets of Claims
According to the USPTO, as an alternative to filing a motion to waive the page limits, “the filing of multiple petitions directed to subsets of related claims should be considered.” 77 FR 48635 (Aug. 14, 2012). The PTAB has recently granted a pair of petitions directed to different subsets of claims of the same patent filed by one petitioner. See, IPR2013-00064, -00065. Several other petitioners are also trying this approach.
Multiple Petitions Directed to Same Claims, Different Grounds
Another way to deal with the IPR page limit restriction may be to file multiple petitions directed to the same claims, and to spread the grounds of unpatentability across the multiple petitions. One petitioner requesting Covered Business Method Patent review (“CBM”)¹ of five patents filed five pairs of CBM petitions.² Within each pair of petitions, the claims for which review was sought are the same, but the alleged grounds of unpatentability were split between the petitions.³ See, CBM2012-00002, -00003, -00004, -00010, -00011, CBM2013-00001, -00002, -00003, -00004, -00009. The PTAB granted (at least in part) two pairs of these petitions. As to the other three pairs, the PTAB granted one and denied one of each pair. The fact that the petitioner had filed multiple petitions for CBM on the same claims apparently was not an issue (it was not raised as an issue by the PTAB).
Expert Declaration with Claim Chart Exhibit
Yet another approach taken by at least one petitioner was to file a single petition for IPR, without claim charts, but to include in an appendix a very long expert declaration with a claim chart exhibit (that is, the claim chart is part of the expert declaration, rather than part of the petition itself). See, e.g., IPR2013-00080. According to the USPTO, claim charts submitted as part of a petition count towards page limits. 77 FR 48764 (Aug. 14, 2012). However, “an affidavit filed in an appendix of exhibits . . . would not be counted toward the applicable page limits.” Id. at 48736. The PTAB has not yet substantively addressed this approach.
¹ Petitions for CBM are generally limited to 80 pages, and have the same formatting requirements as petitioners for IPR. 35 C.F.R. § 42.24(a)(ii).
² The five pairs of petitions are in the following proceedings: (1) CBM2012-00002 and -00004, both directed to the same claims of U.S. Patent No. 6,064,970; (2) CBM2012-00003 and CBM2013-00009, both directed to the same claims of U.S. Patent No. 8,140,358; (3) CBM2012-00010 and -00011, both directed to the same claims of U.S. Patent No. 7,124,088; (4) CBM2013-00001 and -00002, both directed to the same claims of U.S. Patent No. 7,877,269; and (5) CBM2013-00003 and -00004, both directed to the same claims of U.S. Patent No. 8,090,598.
³ At least one IPR petitioner has filed a pair of petitions directed to the same claims (different grounds); however, those petitions rely on different claim constructions. See, IPR2013-00120, -00121. The PTAB has not yet addressed these petitions.