IPR Institution Can Be Denied Based on Petition Length or Failure to Identify Related Matters
IPR Petitioners often wrestle with determining how much content to put into a petition (and related declarations and exhibits) before considering breaking a petition into multiple filings. On the one hand, insufficient detail of anticipation or obviousness can cause a failure of institution of proceedings. On the other hand, at some point an overly lengthy filing can prevent institution of an IPR on its own. Further, the cost of each petition may drive clients to seek to maximize the information in any particular filing.
This question came to a head in a recent decision in which the PTAB denied institution for a variety of reasons, but most notably because the petition was unduly lengthy. See Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00356. In the underlying Petition, Apple filed an IPR challenging the validity of ContentGuard’s patent, U.S. Patent No. 8,001,053 (the ‘053 patent) related to digital rights management (DRM). The petition was filed based on two separate 35 U.S.C. § 103 grounds, both based on U.S. Patent No. 6,389,538 to Gruse. The PTAB determined that the Petitioner did not demonstrate a reasonable likelihood of prevailing based on either ground because the ‘053 patent “describes and claims a particular scheme among the many possible schemes” of DRM and the Gruse reference showed general schemes of DRM without disclosing the particular scheme of the ‘053 patent.
Yet, the PTAB’s other bases for denial of institution are more important than the defects of the § 103 grounds. First, the PTAB took significant exception to the unnecessarily lengthy nature of the Petition, and particularly to the fact that the Petition included excessive irrelevant content.
The PTAB noted that the Expert Declaration used by Petitioner was an “omnibus declaration” that was used in multiple other petitions. As a result, the Expert Declaration included significant information not pertinent to the challenge of the ‘053 patent. Similarly, the PTAB noted that while the Petition included sixty-one exhibits totaling 30,298 pages, fifty-one exhibits were not cited in the Petition, ostensibly because they were related to other petitions. Elaborating on the problem posed by this extraneous content, the PTAB stated, “petitioners, ‘should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.’ (citing to 77 Fed. Reg. at 48,763) The Petition widely misses that mark.” IPR2015-00356 at 18-19.
Based on the PTAB’s final written decision, it appears that a large part of the problem was the Petition’s reliance on information that the Board did not need, whatsoever. Although finding the magic length of a Petition may be difficult, a clear lesson from this decision is to strike any extraneous content and avoid omnibus declarations like the one used by Petitioner.
This written decision includes one final lesson – always fully comply with all mandatory Petition requirements. The Petitioner failed to completely disclose all matters related to the ‘053 patent. Citing to 35 U.S.C. § 312(a)(4), the PTAB noted that mandatory requirement of “any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.” (quoting 35 C.F.R. § 42.8(b)(2)) Apparently, Petitioner failed to cite several litigation matters directly related to the ‘053 patent and also failed to cite to litigation matters related to other patent applications related to the ‘826 matter. The PTAB determined that, although the institution would not be granted on § 103 grounds, the institution could have been denied by the failure to provide mandatory notices.
When filing a Petition (or any filings before the PTAB), be mindful of the discretion and power of the Board. This decision suggests that taking shortcuts may be severely sanctioned and lead to adverse outcomes for a party.