Order Regarding Non-Compliant Petition IPR2014-00901

Improper argument in claim charts


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

Order Regarding Alleged Deficiencies in Petitions IPR2014-000631 and IPR2014-000632

Takeaway: A petitioner may summarize the disclosure of the prior art in its claim charts instead of quoting the prior art directly, and the summaries may not be found to be improper argument.

In its Order, the Board addressed two alleged deficiencies with the Petitions. Specifically, Patent Owner contended that the claim charts contained in the Petitions included excessive and improper arguments, and that Petitioner improperly numbered the exhibits referenced in each Petition.  Regarding the claim charts, the Board stated that they do not include content that is prohibited.  Although the rules allow quotations from prior art references in the claim charts, that does not preclude the use of a concise summary of the disclosure of a reference as an alternative to quoting the reference in an element-by-element showing.  Petitioner’s claim charts include such a concise summary, and did not include excessive and improper argument.  The Board also found that the brief introductory statements that precede the disclosure of the reference did not rise to the level of “argument.”  The Board agreed with Patent Owner that Petitioner improperly numbered the exhibits, and ordered Petitioner to renumber and refile the exhibits in IPR2014-00632. Continue reading

Order Regarding Formatting of Petitions IPR2013-00547, 548, 552, 553

Takeaway: Claim charts accompanying a petition should not include any arguments, claim construction, statements of the law, or detailed explanations as to why a claim limitation is taught or rendered obvious by the prior art. They should only be used to provide an element-by-element showing of how the prior art teaches the limitation of a claim.

In its Order, the Board discussed various deficiencies with Petitioner’s Corrected Petitions. First, the Board addressed improper argument in claim charts.  The Board’s Notice of Filing advised Petitioner of improper arguments in the claim charts in its Petitions and gave Petitioner five days to correct the defect.  Patent Owner asserted that the claim charts in the Corrected Petitions still contained improper argument and asked to have the Petitions dismissed. Continue reading

Summarizing Initial Conference Call on Proposed Motions by the Parties IPR2014-000180

Takeaway: Some actions by the parties can only be carried out via the filing of a motion, whereas others do not require any motion. Some motions require prior authorization by the Board; others do not.

In its Order, the Board summarized an initial conference call that it had held with the parties to discuss any proposed motions that the parties may have intended to file.  Each of the parties had filed a list of proposed motions prior to the call.

Patent Owner indicated that it intended to file a contingent motion to amend.  In response, the Board required Patent Owner to arrange for a conference call to discuss the proposed motion to amend no later than two weeks before the deadline to file a motion amend. Continue reading

Order Expunging Petitioner’s Reply for Not Conforming to Formality Requirements IPR2013-00131

Takeaway: If submitted papers do not strictly comply with the formality requirements of 37 C.F.R. § 42.6, then the Board may order that they be expunged from the record.

In its Order, the Board addressed several issues, including a contention by Patent Owner that Petitioner’s Reply to Patent Owner’s Response (Paper 29) and Petitioner’s Opposition to Patent Owner’s Motion to Amend (Paper 30) were not in compliance with 37 C.F.R. § 42.6.  The Board agreed with Patent Owner, finding that these papers used 12-point proportional font instead of the 14-point font required by the rule; that these papers included footnotes that used a font much smaller than 14-point font; and that these papers included block quotes that were single-spaced rather than using 1.5 line spacing as required by the rule.  As a result of these deficiencies, the Board ordered that Papers 29 and 30 would be expunged for failure to comply with 37 C.F.R. § 42.6. Continue reading

Denying Motion to Exceed Page Limits and other Procedural Aspects IPR2013-00312

Takeaway: Petitioners need not focus on issues in their Reply that have already been decided in the proceeding, and responses to a patent owner’s statement of material facts in dispute could be presented as an appendix to the Reply and not be counted against the 15 page limit.

In its Order, the Board clarified procedural rules and denied Petitioners’ request for three additional pages in their Reply to the Patent Owner Response. First, in response to Petitioners’ question regarding how to respond to Patent Owner’s “Statement of Material Facts in Dispute,” the Board directed Petitioners to 37 C.F.R. § 42.24(c) indicating that Petitioners should include a short response that admits, denies, or otherwise indicates they cannot admit or deny, but it can be included as an appendix to the Reply and not be part of the fifteen page limit. However, if Petitioners wish to include an additional statement of facts, that must be included in the fifteen page limit. The Board then addressed Petitioners’ inquiry regarding submission of additional excerpts of a book into the record where Patent Owner had filed only certain portions of the book. The Board stated that Petitioner may submit additional excerpts of the book as long as they are within the scope of proper rebuttal. Finally, the Board denied Petitioners’ request for three additional pages for their Reply, stating that the request did not present extraordinary circumstances justifying the additional pages because there are only three grounds of unpatentability based on two references, and Petitioners do not need to address issues in their Reply that have already been decided in the proceeding. Continue reading

Denying Motion to Exceed Page Limits IPR2013-00402

Takeaway: The Board will only grant a request for additional pages beyond the 15 page limit for motions to amend if the issues in a case are overly complex or the claims are so voluminous that it would be unreasonable for the Patent Owner to meet the page limit.

In its Order, the Board denied a request by Patent Owner to file a consolidated motion to amend claims in two patents in two separate proceedings. The Board indicated that the two patents included different claims, and that the substitute claims would be different. Thus, the Board believed that a motion to amend claims should be separately filed in each proceeding. Continue reading