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.

Proposed Claims in IPR Motions to Amend Can Now Be Placed in Appendix

iStock_000017878764XSmallThe PTAB recently sent out an email alert, directing practitioners to its order providing guidance on Motions to Amend in Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19. The Order stemmed from the required “conferral” with the Board regarding a motion to amend, 37 CFR § 42.121(a), and is surely another response from the Board in response to criticism that only one Motion to Amend has been granted to date.

In general, the Board set forth, again, a listing of all the many requirements of a Motion to Amend. Those requirements are reviewed below. What is unique about this Order, and surely the reason it was set forth separately in the PTO alert, is the fact that the Board authorized Patent Owner to place its proposed substitute claims in an appendix, such that it did not count against the 15-page limit for motions to amend. This has been a sore subject with Patent Owners who were otherwise forced to cram all the requirements of the Idle Free decision, and its progeny, along with a listing of the proposed claims, within the 15-page motion to amend. Assuming this is a trend by the Board, this will be welcome to Patent Owners who are have been clambering for a more fair opportunity to address all the many requirements of these motions.

By way of review, we set forth the other requirements of a Motion to Amend that were reiterated in the Order:

  • Proposed substitute claim should be responsive to the ground of unpatentability applicable to the original claim for which it is a substitute;
  • A claim listing is required, including each proposed substitute claim (with any claim having a changed scope included);
  • The proposed substitute claim must be traceable back to the original claim it is intended to replace;
  • If more than one substitute claim is required for a particular claim, the motion should articulate a special circumstance to justify the request;
  • The motion must show clearly the changes of the proposed substitute claim vis-a-vis the original claim (i.e., brackets for deleted text; underlining for inserted text);
  • Patentability must be shown, in general, not merely over the references applied against the original claims;
  • Written description support must be shown for each proposed substitute claim (citing to the original disclosure and showing support for the entire claim, including demonstrating disclosure in any intervening applications);
  • If a new term is proposed, the meaning of which reasonably can be anticipated as subject to dispute, the Patent Owner must provide a proposed claim construction (citation to “plain and ordinary meaning” is viewed as unhelpful – what that meaning is must be provided);
  • Sufficient underlying facts should be provided regarding the proposed added feature, including whether it was previously known anywhere, in whatever setting, and whether it was known in combination with any other elements of the claim (if known, the motion must show why it was not obvious);
  • Patent Owner must reveal what it knows about the new feature (i.e., including a discussion of the ordinary skill in the art, with a particular focus on the feature added, such as a specific discussion about the technical knowledge pertaining to the added feature, whether there are textbooks or conventional practices relating to the feature, and what basic skill set would be possessed by one of skill); and
  • Make a showing regarding the co-pendency and common-inventor requirements of 35 USC § 120 with respect to each ancestral application in the chain of priority applications.

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.

What is in your Inter Partes Review Claim Chart?

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.

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.