Failure to provide a detailed explanation of the relevance of prior art disclosures may foreclose any possibility of institution of IPR.  Data ChartA petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 

On June 18, 2015, the Board issued its decision in GN ReSound A/S v. Oticon A/S, IPR2015-00103, denying Petitioner’s Request for Rehearing and essentially scolding the Petitioner for failing to meet the requirements set out in 37 C.F.R. § 42.22(a)(2).  The Petitioner filed the Request for Rehearing of the Decision to Institute in which the Board denied institution of IPR.

In it’s petition for IPR, the Petitioner asserted that claims 6-8 and 14 of U.S. Patent No. 8,300, 863 were obvious in view of three references.  To support their assertions, the Petitioner included a claim chart with two columns: column 1 included claim language and column 2 included text from one or more of the three references.  According to the Board, however, the claim chart presented in the Petition failed to identify which of the references allegedly taught or suggested a particular claim element.  “Although we agree with Petitioner that the quoted passages from Yoshino ’289 are present in the claim chart on page 22 of the Petition, we are not persuaded that bare citations and quotes provide a sufficiently detailed explanation of how the asserted references teach or suggest the claimed limitations. Essentially, Petitioner requires the Board to search through the cited portions of both Meskens and Yoshino ’289 to map prior art disclosure with claim elements.”  (Decision, p.6)

To support their assertions that the Board misapprehended or overlooked the discussion of the various claim elements, the Petitioner provided additional claim charts and arguments in their Request for Rehearing that were not, according to the Board, originally included in the Petition.  “Petitioner should not expect us to infer or create arguments from the record.  Accordingly, we are not persuaded on this basis that we erred in determining that the Petition was deficient.” (Decision, p.6)

Petitioners should take notice: while claim charts are useful for highlighting the similarity or relevance between claim language and prior art disclosures, merely including the relevant language in a chart may not be sufficient to convince the Board of the actual teachings of the prior art.

Petitioners should take notice: while claim charts are useful for highlighting the similarity or relevance between claim language and prior art disclosures, merely including the relevant language in a chart may not be sufficient to convince the Board of the actual teachings of the prior art.  Petitioners should therefore carefully consider using a claim chart only as a reference point from which detailed explanations are developed and conclusions are drawn.

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.