In Apple, Inc. v. ContentGuard Holdings, Inc., the PTAB denied the Petitioner’s IPR petition because it did not “focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record,” but instead was a “repository of all the information that a judge could possibly consider.” IPR2015-00358, Paper 9 (Jul. 2, 2015).

As an initial matter, the Board found that the Petitioner failed to identify all related matters (e.g., lawsuits, patent applications, etc.) as required under 37 C.F.R. § 42.8(b)(2) and 35 U.S.C. § 312(a)(4). That failure could have been sufficient independent grounds to deny the petition, but such a determination was unnecessary because the petition was denied for other reasons.

The Board ultimately denied the petition because it determined that the Petitioner failed to demonstrate how the challenged claims were unpatentable as obvious over the cited prior art references. Specifically, the petition did not make clear the reasons to modify the main prior art reference or combine it with the secondary reference. The petition did not sufficiently identify the differences between the claimed invention and the prior art, lacked articulated reasons to modify/combine the known elements, and simply “[left] it to the Board to ascertain what gaps to fill.” Further, the petition failed to make clear any particular modification or combination of the asserted prior art and how such modification/combination would have rendered the claims obvious.

The Board also took issue with the accompanying 342-page “omnibus” expert declaration, as it included “voluminous information not relevant to this Petition” since it was recycled from eight previous petitions. The Board also noted that 50 of the 61 exhibits (totaling over 30,000 pages) were not even cited in the petition. Noting that the Office Trial Practice Guide requires the PTAB “to secure the just, speedy, and inexpensive resolution of every proceeding,” the Board found that “[n]o such proceeding could [have been] secured with the record presented [] by the Petitioner.”

As this decision shows, petitioners must remember that they have the burden to clearly and succinctly explain why the claims should be held unpatentable over references cited in the petition. The Board will not sift through a mountain of information to cobble together rejections from the cited references and other information of record for a petitioner.