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

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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.

The Board agreed, citing to FAQ 12 on the Board’s website that states that extensive use of claim charts in a petition is discouraged and that placing arguments and claim construction in a claim chart to circumvent the double spacing requirement is not permitted and may not be considered by the Board. Petitioner’s counsel stated that they had contacted the Board for guidance and discussed the claim charts with a Board paralegal.  The Board then reminded Petitioner’s counsel that ex parte contact with Board employees about a specific proceeding is prohibited with the exception of “ministerial communications” (e.g., to arrange a conference call).  The Board ordered Petitioner’s counsel to refrain from any further ex parte contacts of this nature.  The Board then directed Petitioner to the FAQ and to Paper 3 in IPR2014-00587 that provides that claim charts should only be used to provide an element-by-element showing of how the prior art teaches the limitations of a claim, and should not include 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. Mere citations to an expert declaration is permissible, but anything more is improper.

The Board turned to Patent Owner’s contention that the block quotes in Petitioner’s Corrected Petitions are not in compliance with the rules on font and spacing. Petitioner did not dispute this fact and offered to revise its Corrected Petitions accordingly.  The Board then gave Petitioner five business days to submit substitute corrected petitions.

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00547; IPR2014-00548; IPR2014-00552; IPR2014-00553
Paper 9: Order on Conduct of the Proceeding
Dated: May 23, 2014
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Giannetti