Petitioners: Don’t Forget Procedure!

Authored by Michelle Carniaux and Michael E. Sander

While developing an inter partes review petition, it is easy to get so focused on the substance of the invalidity challenge and expert declaration that PTAB procedure and practice guidelines are left as an afterthought. However, as has been shown time and time again, the PTAB relies on its procedures to help keep post grant proceedings streamlined. As the dockets of the PTAB Administrative Patent Judges become heavier, one can expect the importance of procedure to become even greater. Two (related) practices that appear to frustrate PTAB Judges are: (1) incorporating into the petition by reference portions of declarations or other exhibits, and (2) insufficiently explaining in the petition how claim elements are met.

PTAB regulations expressly prohibit arguments from being incorporated by reference from one document into another document. See 37 CFR § 42.6(a)(3). This regulation reflects the PTO’s desire to minimize the risk that petitioners use “incorporation by reference” as a mechanism for circumventing page limits, and to avoid having the PTAB Judges play archeologist. See Rules of Practice for Trials Before the PTAB, 77 FED. REG. 48,613, 48,617 (Aug. 14, 2012). In one recent decision denying institution, the PTAB admonished a petitioner for what appeared to be several incorporations by reference:

The footnotes cite a total of seventeen pages, including eleven pages of claim charts, of Dr. Roy’s Declaration—substantially more pages than section VII-A in the Petition. . . . The practice, here, of using footnotes to cite large portions of another document, without sufficient explanation of those portions, amounts to [an improper] incorporation by reference.

See IPR2014-00454, No. 12 Decision Denying Institution at 7-8 (P.T.A.B. Aug. 29, 2014). The same opinion took the petitioner to task for including “claim charts in the Petition [that] cite to other claim charts.” Id.

PTAB regulations also require that an IPR petition identify “how the construed claim is unpatentable.” See 37 CFR § 42.104 (b)(4). Merely stating a conclusion, or citing to a declaration or exhibit without an accompanying explanation of what is contained in the exhibit, is insufficient. For example, stating that a piece of prior art “discloses limitation (a) of claim 1,” and then citing pages of an expert declaration will likely annoy the Judges. See id. at 9. Repeating claim language is not any better. Beyond giving the impression that the petitioner is subverting the page limits, such broad and conclusory citations create more work for the Judges, forcing them to sift through external exhibits to try to re-create the argument for you.

The number of IPR filings has been steadily increasing, approaching nearly 200 new filings a month. Efforts should be made to focus the PTAB on the substance of invalidity challenge.

When a Patent Owner faces a procedurally unsound petition, a balancing act must be done. While the Patent Owner should identify the Petitioner’s procedural deficiencies, a sufficient amount of pages should be allocated in the Patent Owner’s Preliminary Response to the Patent Owner’s substantive argument. See IPR2014-00454, No. 10 Patent Owners Preliminary Response (P.T.A.B. Jun. 4, 2014).

Disclosure: Kenyon & Kenyon LLP successfully represented the Patent Owner in the above-cited IPR proceeding, but the two authors did not assist in drafting any of the papers.