An Invitation Declined: Supporting a Petition for Inter Partes Review

Authored by Clifford A. Ulrich and Michael S. Turner

Since the USPTO first issued its rules regarding inter partes review proceedings, prospective petitioners have grappled with the choices of which grounds of unpatentability to present to the Patent Trial and Appeal Board. Given the estoppel provisions of 35 U.S.C. § 315, which may prevent a petitioner from later raising any ground of unpatentability that either was raised or could have been raised in the IPR proceeding, petitioners taking the IPR plunge are loathe to hold back any grounds of unpatentability that might resonate with the Board, or later to the Federal Circuit on appeal.In a recent decision, the Board denied a petition that attempted to present, by the Board’s count, “no fewer than 127 asserted grounds of unpatentability.”1 According to the Board, the petitioner, Zetec, Inc., presented underdeveloped arguments, lacking in evidentiary support, which “would place a significant burden on the Board and contravene the efficient administration of the Office.”2

As one might imagine, in presenting 127 grounds of unpatentability, given the Board’s rules limiting the length of IPR petitions, the petitioner had little room for supporting evidence or argument. The petitioner, perhaps attempting to save space, presented limited citation to the prior art, and presented multiple grounds of obviousness in combined discussions (e.g., “Claim 2 is obvious under 35 USC 103(a) over Sullivan in view of any of Sapia (Ex 1008), Winslow (Ex. 1014) or Junker et al. (Ex. 1012).”).3

The Board, however, found this presentation unavailing. Highlighting the absence of explanation as to where each element of the claim is found in the prior art, support for contentions of inherency, and expert testimony or other evidence as to why one skilled in the art would have combined the features disclosed in the prior art, the Board denied the petition.4 The Board was further nonplussed by the petition’s repeated referral to “common sense” limitations, which the petitioner did not further support.5

The Board could have simply denied the petition on the basis that the petition fails to show that there is a reasonably likelihood that that the petitioner would prevail on at least one of the challenged claims. Rather, the Board refused to undertake an analysis of the prior art:

Therefore, we decline to expend our resources scouring the numerous grounds for one that demonstrates a reasonable likelihood that Petitioner would prevail in showing unpatentability of at least one of the claims challenged in the Petition (see 35 U.S.C. § 314(a)). Nor will we attempt to fit evidence together into a coherent explanation that supports an argument that demonstrates a reasonable likelihood that Petitioner would prevail. See Stampa v. Jackson, 78 USPQ2d 1567, 1571 (BPAI 2005) (quoting Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111-12 (2d Cir. 1999) (“Appellant’s Brief is at best an invitation to the court to scour the record, research any legal theory that comes to mind, and serve generally as an advocate for appellant. We decline the invitation.”)).6

The Board further cited the possible undermining of the Board’s ability to complete its review of other petitions in the statutorily mandated time period.7

With this decision, the Board makes clear that a petitioner will not be able to hand the Board a laundry list of grounds of unpatentability, and ask the Board to determine whether any of the spaghetti has stuck to the wall.

1 Zetec, Inc. v. Westinghouse Elec. Co., LLC, IPR2014-00384, paper 10, at 8.
2 Id. at 15.
3 IPR 2014-00384, paper 5, at 17. The petition even notes, that “To save space, hereinafter the preceding obviousness rationales are referenced, where applicable, without citation.” Id., at 18.
4 IPR 2014-00384, paper 10, at 8–13.
5 Id., at 13 (“The reliance on ‘common sense’ is unhelpful in this case because the Petition fails to explain adequately or provide sufficient evidence as to why one skilled in the art [would perform the claimed method steps].”
6 Id. at 15.
7 Id. at 16 (“Moreover, in the present circumstances, to attempt to determine, within the three-month period mandated by Congress, whether any of the grounds asserted by the Petitioner shows that there is a reasonable likelihood that Petitioner would prevail on at least one of the claims challenged in the Petition undermines the Board’s ability to complete determinations regarding other petitions awaiting decisions on institution and to complete instituted trials in the time periods mandated by Congress. See 35 U.S.C. §§ 314(b), 316(a)(11); cf. Heckler v. Chaney, 470 U.S. at 831 (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).”).