In Zetec v. Westinghouse, the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that presented “numerous grounds” of unpatentability and “underdeveloped arguments,” as attempting to evaluate such a petition “would place a significant burden on the Board and contravene the efficient administration of the Office.” IPR2014-00384, Paper 10 (Jul. 23, 2014).
The Petition also placed a “significant and unfair burden on the Patent Owner to respond adequately.”
Although the Petitioner listed 68 specific grounds of unpatentability over 14 prior art references in the Petition, the PTAB found that there were actually 127 asserted grounds, based on various combinations of those references, which “obfuscate[ed] the arguments as to each ground.”
Further, the Petitioner did not state the bases of its claim constructions, and invalidity arguments were “sparse.” Specifically, the PTAB found that Petitioner’s arguments and claim chart did not adequately explain where each claim element was found in a particular reference, nor was there sufficient evidence to support assertions that limitations were “inherent” in a reference or “common sense.”
The evidence was also found to be inadequate for obviousness rationales based on combinations of references. Thus, the PTAB declined to expend its resources on determining the merits of the Petition, noting legally mandated time periods and its obligation to other petitions.
As this decision shows, IPR petitions should include only a few but strong unpatentability grounds with well-developed arguments and supporting evidence.
The PTAB will not “scour” a petition for the best argument, nor will it create an argument for a petitioner based on the teachings of the cited references.