Heavy Burden to Waive Page Limits in Inter Partes Review

If there was any doubt regarding whether the PTAB was serious about the page limitations set forth in the Trial Practice Rules for Inter Partes Review proceedings, Illumina Inc. has learned the hard way that there should be no such doubt.  The PTAB sent a stout warning, through its Order expunging Illumina’s over-length petition, that the page limit rules will be strongly enforced.

In a series of Inter Partes Review petitions filed by Illumina against the Trustees of Columbia University, Illumina filed petitions that met the 60 page limit per 37 CFR 42.24, but also concurrently filed a series of longer petitions.  This is a practice that is considered in the Trial Practice Rules – a petitioner that will move to waive the page limits must file a compliant brief, as well as the over-length brief, and then moved the PTAB to waive the 60 page limit.  In this case, the PTAB denied all such motions across the Illumina proceedings, finding that Illumina failed to set forth sufficient good cause as to why such waiver is required.  See, e.g., Illumina, Inc. v. Trustees of Columbia University, IPR2012-00006.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR 42.24(a)(v)(2) – “Petitions to institute a trial must comply with the stated page limits but may be accompanied by a motion to waive the page limits.  The petitioner must show in the motion how a waiver of the page limits is in the best interests of justice and must append a copy of proposed petition exceeding the page limit to the motion.”[/pullquote]

More specifically, Illumina filed its motion to waive the page limit of its petition, alleging that the extra pages were needed to present non-cumulative grounds for unpatentability.  The Board denied the motion, finding that Illumina did not provide sufficient basis for the requested relief, expunging the proposed petition that was 24 pages over the limit.  There are instructive lessons to be learned from the analysis provided by the Board, however, that may help guide future movants regarding what it will take to have a motion to waive page limits allowed.

The Board first noted that the patent challenger’s request lacked “supporting evidence or explanation” regarding why the challenger’s arguments could not sufficiently have been explained within the Trial Practice Rules’ 60 page limit.  Order at 2.  The Board helpfully provided two examples of the types of evidence that may be relevant in this regard: 1) meaningful discussion of relevant teachings found in the additional references cited in the longer version of the petition that are not found in the compliant petition; or 2) meaningful discussion of the limitations of the challenged claims that could not be addressed sufficiently within the 60 page limit because the claims are too numerous or lengthy.  Order at 2-3.  In short, the Board rather bluntly concluded by pointing out that it is not the PTAB’s role to compare the compliant and proposed petitions, and attempt to figure out for itself whether the waiver is in the interest of justice – “Instead [the patent challenger] has the burden of establishing why it is entitled to the relief sought.”

A related, cautionary tale to consider is that this failed effort by Illumina may have far-reaching effects in view of the strong estoppel that attaches to inter partes review proceedings.  There is no question that Illumina was aware of the arguments that it presented in the proposed, over-length petition.  As such, those grounds could have been raised and Illumina will be prevented from relying upon them in the future.  Other challengers in Illumina’s predicament have filed multiple IPR petitions to get around the page limit rules.  Notably, however, the estoppel against Illumina does not attach until after a final, written decision, so Illumina has the opportunity to file additional petitions to address the grounds for challenge that were not allowed in these proceedings.