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

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

 by Timothy R. Baumann

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 aninter 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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