Fitch Even IP Alert: PTAB Once Again Denies IPR Petition Based on Procedural Considerations

Fitch Even IP Alert: PTAB Once Again Denies IPR Petition Based on Procedural Considerations

 On August 13, 2014, in Fidelity National Information Services, Inc., v. DataTreasury Corp., the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) of two patents because the petition included “voluminous” references that did not clearly identify invalidity grounds. The PTAB faulted the petitioner, Fidelity National Information Services, for relying upon an expert declaration (incorporated by reference in the petition) that totaled 287 pages and for citing a claim chart that was 1,003 pages long. The PTAB stated that the inclusion of the declaration by reference amounted to an attempt to circumvent the 50-page limit for a petition under the rules. 

The PTAB’s ultimate conclusion was that the petition itself did not present arguments that were reasonably likely to be successful and that it would be unduly burdensome on the board to have to review such a voluminous amount of reference materials. Petitioners should carefully ensure that their petitions establish a “reasonable likelihood” of success, and that this is all presented within the 50-page petition limit.

This decision comes just three weeks after the PTAB’s previous decision to deny an IPR for “reasons of administrative efficiency,” also because the petitioner’s request did not comply with established IPR requirements.

Our alert regarding that decision follows:

On July 23, 2014, the Patent Trial and Appeal Board (PTAB) issued a decision in Zetec, Inc. v. Westinghouse Electric, LLC, that denied Zetec of an inter partes review (IPR) on the basis that it has discretion to deny petitions without considering the substantive merits of the petition. The PTAB took that action because it viewed the IPR request as too lengthy and not compliant with the rules that require a clear articulation of the basis for the IPR. Parties considering instituting an inter partes review should carefully review the decision to ensure any petition they file complies with the PTAB’s requirements.

In this particular case, petitioner Zetec presented 68 grounds of unpatentability that relied upon one or more of 14 references. The petition presented both anticipation and obviousness grounds for invalidity.

The PTAB stated that the petition did not adequately explain how certain claims were anticipated, did not adequately address why certain claim elements were inherent, did not include sufficient evidence to support obviousness contentions, and analyzed various obviousness grounds together rather than separately.

Given this set of circumstances, the PTAB held that the petitioner had failed to follow the Board’s rules requiring that proposed rejections be presented with particularity. Further, the PTAB asserted that the petition placed an unfair burden both on the patent owner to respond to undeveloped arguments and on the PTAB to determine whether the petitioner had met its obligation to show it had a reasonable likelihood to prevail.

Given the PTAB’s comments in its decision, it would be wise for petitioners to carefully evaluate the number of proposed rejections and the support offered for these proposed rejections in any petition for inter partes review.

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