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Beware Of Petitions And Claim Charts Having Conclusory Statements On The Teachings Of The Prior Art

In Debasish Mukhopadhyay v. Veolia Water Solutions & Technology Support (Case IPR2014-01563), the Patent Trial and Appeal Board (PTAB) denied a petition for inter partes review of U.S. Patent No. 7,815,804 (the ‘804 Patent) finding that the petitioner failed to establish a reasonable likelihood that the claims are unpatentable over the cited prior art.

The ‘804 Patent is directed to water treatment processes and has two independent claims, each of which is a method claim having thirteen steps.  The petition alleged that each of the independent claims is obvious over a combination of prior art references, and the petitioner submitted, along with the petition, a claim chart identifying which prior art references relate to each of the method steps.

One of the thirteen method steps, which appears in both of the independent claims, recites “recycling at least a portion of first waste stream to at least one of the reactors.”  With respect to this “recycling” step in the claim chart, the petitioner merely made a conclusory statement to the effect that “[t]he [Prior Art] discloses recycling at least a portion of first waste stream to at least one of the reactors.”  Notably, the claim chart did not specify which portions of the cited references allegedly disclose the “recycling” step, nor did the petition. On this basis, the PTAB denied the petition as failing to “specify or explain adequately which parts of these references teach or render obvious the claimed recycling step.”

As a takeaway, it is insufficient for a petitioner to make a conclusory statement as to a prior art reference’s alleged teaching of a claimed method step.  Rather, the petitioner must specifically identify which portion of the reference allegedly discloses the claimed method step, otherwise the petition is at risk of being denied for not having established a reasonable likelihood that the claims are unpatentable over the cited reference.

© Copyright 2020 Armstrong Teasdale LLP. All rights reserved National Law Review, Volume V, Number 126

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