The Board’s decisions instituting inter partes review on several grounds in two petitions filed by Deere & Company provide guidance on possible ways to organize an IPR petition and identify grounds for review.  Deere filed two petitions (IPR2015-00898 and -00899) against U.S. Patent No. 6,202,395 (Gramm) asserting parallel challenges based on slightly different groupings of prior art. The Patent Trial and Appeal Board instituted trial on both, offering four observations that may be helpful when preparing an IPR petition.

First, the use of “and/or” within the list of prior art for a particular grounds of challenge results in ambiguity as to the actual bases for each ground. Here, the petitioner asserted three separate grounds for challenging various claims in the patent. Each asserted ground was based on a list of references using an “and/or” conjunction. The panel found the use of “and/or” resulted in ambiguity as to the actual bases for invalidity. (‘898 Decision, at 8.) This ambiguity was compounded by a lack of clarity that “reverberates through each of the three identified grounds in the Petition.” (Id., at 9.) Although the panel went to lengths to sort out what grounds appeared to have been actually asserted, there is no guarantee that the panel actually considered the grounds sought by the petitioner. Such ambiguity may not have helped the petitioner in this instance, where several challenges were not instituted.

Second, the use of internal cross-references to other sections of the petition is permissible. In response to the patent owner’s objection to the complicated and difficult to follow petition, the panel noted that, although “there may have been ways to organize the Petition in a more ‘reader-friendly’ manner,” the petitioner’s use of cross-references to other sections of the petition “did not result in [the panel’s] inability to understand the positions put forth by Petitioner.” (‘898 Decision, at 19.) Thus, where the possible grounds for challenging are numerous and closely interwoven, as here, the use of internal cross-references, while not preferred, may allow a petitioner to be able to present all the desired arguments and still meet the 60 page limit.

Third, reliance on an expert declaration that one of ordinary skill would have combined certain features is not proper if the reference used by the expert is not expressly identified in the corresponding ground. Here, the petitioner submitted an expert declaration that relied upon a reference (the May-Wes reference) that was not actually identified in the stated  grounds. Although the panel stated that such references may in some cases be relied on for providing background on the state of the art, the reference was not acceptable for supporting an argument regarding what the person of ordinary skill in the art would have been prompted to do. (‘898 Decision at 21.) Interestingly, this was so even though the May-Wes reference was provided and listed as an exhibit to the petition. In this circumstance, the panel narrowly excluded the arguments based on the May-Wes reference, in that the arguments “based solely on May-Wes” were not considered by the panel in rendering the Decision. (Id.)

Fourth, use of 133 or more pages of claim charts in an expert declaration is “excessive” and may result in portions of the  claim charts not being considered. In one petition, the expert declaration was 214 pages long, of which almost 135 pages were claim charts. In the second,  the expert’s declaration included a similar number of pages of claim charts. The declarations stated several times that the expert’s opinions were supported by various sections of the claim charts. Here, the panel found that, in light of the 60-page limit for petitions, “the use of 135 pages of claim charts appears, on its face, excessive.” (‘898 Decision, at 33.) Therefore, the panel disregarded the claim charts “to the extent that a position is taken in the claim charts that is not expressly reiterated in the Petition.” (Id.)

Aside from the fact-specific points above, there seem to be two more broadly applicable take away lessons from these decisions. First, it is imperative to be as precise as possible about the asserted grounds of challenge. Failure to list the exact combination of prior art relied upon in challenging a claim may result in the desired grounds not being considered. Second, brevity, precision, and thoroughness within the four corners of the petition are paramount. The Board will not hesitate to ignore arguments that are presented only in supporting materials, such as declarations and claim charts, especially when those materials become excessively long in view of the 60-page limit for the petition itself.