PTAB Generously Expands Page Limits in Patent Owner Response

41185418_sThe Board has earned a reputation for rigidly following the procedural rules for IPR proceedings, for good reason. Early on, the Board was likely concerned that an ad hoc web of decisions that granted relief from the variety of rules that govern IPR would create an unwieldly body of decisions. As IPR approaches its 3-year old birthday, however, there are ever growing signs that the Board is willing to consider deviations from core procedural rules, in the right circumstances. For example, in Daicci Sankyo Co., Ltd., v. Alethia Biotherapeutics, Inc., IPR2015-00291, the Board granted Patent Owner’s request for 25 additional pages to argue the prior art status of certain references relied upon by Petitioner. Order at 3. Finding that the particular facts of the case favored an exception to the rules, the Board granted Patent Owner an additional 25 pages “to be used solely for the purposes of addressing the prior art status of references relied on by Petitioner based on prior conception plus reasonable diligence and/or prior actual reduction to practice.” Id. Similarly, Petitioner was granted an additional 12 pages to its reply brief to respond to these arguments.

Also interesting in this decision is the Board’s recitation of what should be addressed relative to this conception issues. Specifically, Patent Owner was instructed to present a “diligence chart” that includes: “1) list all days from the beginning of diligence through the end of diligence, 2) briefly state what happened on each day, and 3) cite the page and line of the motion on which the listed day is discussed; every date gap in the diligence showing must be explained…” Order at 4.

So, the Board demonstrates some leniency in the procedural rules, and also provides interesting guidance regarding what should be provided to the Board to prove diligence.

PTAB Finalizes “Quick Fix” Changes to IPR/PGR Procedure

USPTOThe PTAB issued its revised IPR Rules today, finalizing the “quick fix” changes it forecasted in late-March. There are numerous changes that have been made to IPR practice, many of them ministerial in nature. We focus here on the four most significant changes contained in this rule set:

1. Changes to Page Limits in Patent Owner’s Motion to Amend. The requirements for a Patent Owner Motion to Amend have been changed such that the motion may now be up to 25 pages in length (up from 15 pages). An opposition to a Motion to Amend now has a 25-page limit, too. Also, it is no longer a requirement that the amended claims be set forth as part of the motion itself, eating into the page limit. Instead, the proposed amended claims may be presented as a claims appendix and the listing is not subject to the 25-page limit.

2. Changes to Petitioner Reply Brief Page Limit.  The page limit for a Petitioner Reply Brief has been extended to 25 pages (from 15 pages). In the past, it had been difficult to respond to a full 60-page Patent Owner Response brief in merely 15 pages.

3. Required Font Changes. Parties must use Times New Roman font in all PTAB filings from this point forward. The type of font to be used in filings to the Board had been fairly open-ended in the original rules. Over the course of a 60-page brief, though, one type of compliant font might result in a brief that is up to several pages shorter than other compliant fonts. Those fonts were, however, difficult to read at times. More uniformity, through the use of Times New Roman, will address this issue.

4. Multiple Back-Up Counsel Allowed. The IPR/PGR Rules as initially enacted, seemed to suggest that only one back-up counsel was allowed. In practice, the Board never limited the parties to merely one counsel and this amendment codifies that practice.

The other, less significant changes to the Rules can be reviewed in the 6-page notice published today in the Federal Register.

PTAB Getting Tough on Petitions Seeking to Circumvent Page Limit

11011816_sOld 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.

25 for 26: Inter Partes Review Trial Instituted On All Grounds In Case Involving Prior Denial of Ex Parte Reexamination Request

Research in Motion was again successful in getting all claims of a Multimedia Ideas patent into an inter partes review trial for all challenged grounds, even relying on some prior art and arguments that were unsuccessful in a denial of a prior ex parte reexamination request. The case is styled Research and Motion Corp. and Research and Motion Ltd. v. Multimedia Ideas LLC (IPR2013-00036), involving US Patent No. 6,871,048. The Board granted the IPR trial for all 12 claims based on all 24 obviousness grounds for challenge. There were no challenge grounds based on anticipation.

The invention of the ‘048 patent relates to a mobile communication apparatus (e.g., a cell phone) for carrying out communication through radio waves and an information providing system using the mobile communication apparatus. Users of wireless mobile communication devices often carry, in addition, a portable sound device for playing music or a portable radio receiver for receiving AM/FM broadcasting, etc. It is an object of the invention to combine the functions of these devices so that the user can obtain information of desired content at a desired time without additionally carrying other devices. The dispute between the parties is focused on the meaning of the “stand-by” state, because the claims require reproducing and outputting downloaded data when the apparatus is in a “stand-by” state.

In general, the Board’s decision included several interesting topics, including: 1) consideration of what, if any, effect a prior reexamination decision, involving the same prior art, had on the IPR, 2) whether the pages used in an expert declaration count against the page limit for a petition, and 3) the Board adopted a key claim construction that was even broader than the construction urged by Patent Challenger.

At the outset, the Patent Owner stressed that the Board should carefully consider the prior denial of an ex parte reexamination request for the patent at issue. The Patent Owner further noted that the previous reexamination request was denied after explicitly considering two references with respect to the stand-by state limitation in which the Patent Challenger is relying on in the present IPR. Although the Board stated that consideration by examiners of the same claim feature based on the same prior art certainly should be considered, the patent owner should not expect that the Board necessarily would come to the same conclusion.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 U.S.C. § 325(d) – “In determining whether to institute or order a proceeding under … chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[/pullquote]

The Board then made it very clear that the PTAB will not give any deference to previous reexamination decisions, even when considering the same prior art and arguments.  The Board went on to further state that the Patent Owner’s argument that the Patent Challenger failed to explain why the previous denial was incorrect or why it should be reconsidered, was misdirected. “A petition for inter partes review is not a renewed request for patent reexamination, an appeal of a prior decision denying a request for reexamination, or a rehearing request of the prior decision denying a request for reexamination. The petitioner correctly did not present its petition in any one of those ways.”

This view of prior proceedings is, of course, great news for Patent Challengers.  The Board is more than willing to give a fresh look to old arguments.  While this may be seen by Patent Owners as undermining their property rights and adding uncertainty to earlier decisions by the Office, this is simply another reason why inter partes review proceedings have been, and will continue to be, popular with Patent Challengers.

Further, although this case involves argument about a previous denial of an earlier ex parte reexamination request, the Board’s reasoning extends to all prior decisions by the Patent Office, indicating that the Board is more than willing to reconsider prior art references cited in the patent. To that end, it is interesting to note that approximately 2/3 of IPR petitions filed to date have included at least some previously cited prior art references.

Patent Owner also took the position that Patent Challenger’s petition violated the page length limit, arguing that the twenty-nine (29) page expert declaration that was an exhibit to the petition should have added to the forty (40) page petition given that the declaration contains numerous arguments in addition to factual support. The Board declined to accept Patent Owner’s argument on four grounds:  1) Patent Owner did not identify argument portions of the declaration, 2) arguments not included in the petition may not be considered, 3) page limit objections should be raised as soon as possible, and 4) there is no requirement that a supporting declaration only cite to evidence which has already been directly cited in the petition. Order at 8-9. The Board specifically criticized Patent Owner for taking three months to make a procedural page limit objection.

Finally turning to the merits of the case, the Board construed “stand-by” state to mean a state in which the mobile communication device is powered on and ready to transmit or receive data, but is not actively communicating. This was essentially the interpretation urged by Patent Challenger, but Patent Challenger limited the mobile communication device to a cellphone. Interestingly, the Board stated that even Patent Challenger’s construction was too narrow, and “mobile communication apparatus” should apply to other devices beyond cellphones. The Board also noted that  Patent Owner did not take a position on the construction of the term, as well as mentioning that they were aware of the interpretation used during the previous reexamination denial, but did not address those issues any further. Order at 11-12.

In the end, the Board granted all grounds for all claims. Patent Owner beware – even after the Patent Office has had two or more shots at evaluating the validity of your patent, the Board will provide no deference to those earlier determinations.

PTAB Continues to Add Gloss to Inter Partes Review Trial Practice Rules

iStock_000008674333XSmallWelcome to our third and final report on one of the more comprehensive orders issued to date by the PTAB in an Inter Partes Review proceeding, the PTAB’s “Conduct of the Proceedings” Order from Inter Partes Review No. IPR2012-00022 (Ariosa Diagnostics v. Isis Innovation, Ltd.).  This post focuses on three quick-hitting topics touched upon by the Board in the Ariosa IPR that helps add clarity regarding how these proceedings will be handled.  Earlier posts relating to this order can be found HERE and HERE.

First, the PTAB made note of the fact that the parties advised the Board that they were discussing the entry of a protective order.  As advice that can be used as an IPR practice tip, the Board requested that, to the extent the proposed order deviated from the Board’s default protective order, the parties should identify the differences between the proposed protective order and default protective order.

Second, the PTAB asked Isis, the patent owner, for a date by which it thought it would file any Patent Owner Preliminary Response.  Ariosa took the opportunity to suggest that, given that many of the issues in this Inter Partes Review were similar to those addressed in the co-pending district court litigation between the same parties, that Isis should be given a shortened time frame to file the Preliminary Response.  Isis responded by suggesting that the impending holidays, as well as the fact that counsel for the IPR was different than counsel for the litigation, would make it difficult to file the Preliminary Response sooner than the 3 month window allowed by the Trial Practice Rules.  37 CFR § 42.107.  The Board did not shorten the three month timeframe for filing the Preliminary Response.  It is, however, telling that it considered such an action – suggesting that such requests to shorten the timeframe for filing a Patent Owner Preliminary Response may, under the right circumstances, be granted.

Third, and lastly, Isis requested clarification of the page limit for the Preliminary Response regarding whether such response is limited to the number of pages included in the petition, or whether it was entitled to the full 60 pages allowed by the Trial Practice Rules.  37 CFR §42.24.  The Board made clear that the patent owner is entitled to the full 60 pages provided in the rules, even if the petitioner did not use the full 60 pages in its petition.

Slowly, but surely, clarity is being brought to Inter Partes Review proceedings and the Trial Practice Rules that govern them.