The claim chart has been a fixture of Patent Office post-grant practice, let alone federal court litigation, and inter partes review should be no different. As has become a theme in inter partes practice, however, strict adherence to the Patent Office regulations is paramount in these proceedings, and the venerable claim chart has not avoided the glare of the Board.
In the case of Xilinx, Inc. v. Intellectual Ventures I, LLC (IPR2013-00112), the Board convened a conference call to discuss defects in the petition filed by Xilinx. In the end, the Board accepted the petition, but made clear that the petition was flawed because it contained defective claim charts. Specifically, the Board slapped Xilinx’s wrist because the claim charts contained analysis that went beyond the process of identifying key features of a claim and comparing those features with specific evidence.
The Board’s position is interesting because it is unclear where the Board derived the basis for its strict objection to the claim charts. The Trial Practice Rules (at 48764) state that claim charts are not required, but that they may be filed to “explain clearly and succinctly what the petitioner believes a claim means in comparison to something else, such as another claim, a reference or a specification.” The Rules go on to explain that such charts may streamline the process of identifying key features of a claim and comparing those features with specific evidence. Of course, this latter language is what was cited by the Board in its conference call and subsequent Order, but there is nothing in the rule that would seem to prohibit including analysis in the claim chart. There also is little to help us discern what types of “analysis” were troublesome to the Board.
Our best guess is that the Board is concerned about the page limitations that are imposed on petitions. The inter partes rules state that a claim chart may be single-spaced, despite the requirement that a petition must otherwise be double-spaced. If a petitioner were to include a significant amount of analysis and argument in the claim chart, instead of a succinct comparison of claim language versus specific evidence, this would help a petitioner to avoid the strictures of the page limitation.