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.

Canon Inc. v. Intellectual Ventures II LLC, IPR2014-00631; IPR2014-00632
Paper 6: Order on Conduct of the Proceeding
Dated: May 30, 2014
Patent 7,817,914 B2
Before: Richard E. Rice, James B. Arpin, and Peter P. Chen
Written by: Arpin