Takeaway: Under 37 C.F.R. § 42.104(c), a motion may be filed to correct a mistake in the petition without changing the filing date of the petition, but only if the mistake is a clerical or typographical mistake.
In its Order, the Board denied Petitioner’s request for authorization to file a third corrected petition. Petitioner had requested such authorization, because one of the limitations in claim 30 (referenced in the Order as “element 30.a.1”) was inadvertently omitted from the claim chart submitted in support of Petitioner’s anticipation challenge to claim 30 based on Kapidzic. Continue reading
Takeaway: Claim charts accompanying a petition should only provide an element-by-element showing of how the prior art discloses the claim limitations. Any explanation, characterization, conclusion, or inferences drawn from references should be in the petition, not in the claim chart. Including any explanation in a claim chart can render it deficient and provide a basis for dismissal of the petition and denial of institution.
In its Order, the Board found that once again Petitioner had filed a non-compliant Petition based upon the improper use of claim charts. Following the filing of the initial Petition, the Board issued a notice notifying Petitioner that the Petition was defective based upon improper usage of claim charts. Petitioner filed a Corrected Petition, but the Board found once again that the Petitioner improperly used claim charts. The Board provided one example where the claim chart included a conclusion reached by a declarant. The Board found that this constitutes arguments. Claim charts should be limited to providing an element-by-element showing, such as providing citations to a prior art reference or quotations from a prior art reference. Claim charts should not include explanations, characterizations, conclusions, or inferences drawn from references. If there is any need to explain how a reference discloses or teaches a limitation, that explanation must be in the petition, not in a claim chart. The Board allowed the Petitioner one final opportunity to correct the deficiencies. Otherwise, the Board will issue an order to show cause as to why the Board should not dismiss the Petition and deny institution of trial. Continue reading
Takeaway: A corrected petition may not substantively change the nature of the arguments set forth in the original petition, and like an original petition, cannot incorporate attorney argument within its claim charts.
In its Order, the Board concluded that Petitioner’s corrected Petition was non-compliant, and ordered Petitioner to file a second corrected Petition by a specified date. The original Petition was filed on May 21, 2014. The Board issued a Notice of Filing Date Accorded on May 29, 2014, requiring Petitioner to file a corrected Petition incorporating proper line spacing and not having any attorney argument in the claim charts. Petitioner filed the corrected Petition on Jun 5, 2014. Continue reading