In Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that cited primarily to an expert declaration as failing to contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” as required under 37 C.F.R. § 42.22(a)(2).  IPR2014-00491, Paper 9 (August 13, 2014).

The PTAB expressly declined to consider information presented in the supporting declaration, which was not directly discussed sufficiently in the Petition, because “doing so would permit the use of declarations to circumvent the page limits that apply to petitions.”

This is consistent with the recent treatment by the PTAB of claim charts (which may be single spaced in the Petition) that include analysis or conclusions beyond citation to the art being applied as including attorney argument and thus eviscerating the page limit requirements.

The PTAB noted in Fidelity that the Petition involved three levels of incorporation:

  1. incorporation of the 287-page expert declaration;
  2. incorporation of the thousand-page claim chart by the declaration; and
  3. incorporation of the references by the claim chart.  The PTAB identified an example where four pages of the Petition actually expands to ten pages of citations to references.

The PTAB then concluded that “the Petition’s extensive reliance on citations to the Gray Declaration in lieu of citations to the references themselves amounts to an incorporation by reference of arguments made in the Gray Declaration into the Petition . . . .”

Accordingly, the PTAB decided that “[b]ased on the analysis presented in the Petition itself . . . Petitioner has not met its burden in establishing a reasonable likelihood that the challenged claims are unpatentable.”

Another point of interest in the Fidelity decision is the Preliminary Response filed by the Patent Owner.  Unlike reexamination, where conventional wisdom was that filing a Patent Owner’s Statement was ineffective and thus rarely done, Preliminary Responses in IPR practice are beginning to see acceptance due to their meeting with some success in preventing the IPR from being initiated.

The Patent Owner in Fidelity filed a Preliminary Response alleging that the Petition should be denied under 35 U.S.C. § 315(b) because the Petitioner was served with a Complaint more than one year prior to filing the Petition.

The PTAB found, however, that the Patent Owner did not allege that the Complaint alleged infringement of the patent at issue in the IPR Petition and that the Complaint, in fact, did not allege infringement of the patent at issue in the Petition.

Clearly the prohibition of IPR under 35 U.S.C. § 315(b) for a patent based upon litigation instituted more than one year before the IPR Petition is filed will be reserved for those situations where the “petitioner is served with a complaint alleging infringement of the patent,” as expressly required by the statute.

This decision underscores two points:

  1. for information and arguments that are critical to establishing unpatentability, petitioners in PTAB trials must be sure such arguments are sufficiently discussed in the petition itself (rather than in supporting documents such as an expert declaration) in order to have such arguments considered by the Board, and
  2. Preliminary Responses can be a useful vehicle for bringing certain issues, such as the one-year bar under 35 U.S.C. § 315(b), to the Board’s attention.