Petition Must Establish Grounds of Unpatentability

The reason for presenting a declaration in support of an AIA trial petition is simple — evidence is superior to attorney argument. Likewise, the Patentee will invariably respond with their own declaration once trial is ordered. Indeed, not filing a declaration together with the petition will likely foreclose rebuttal opportunity. Furthermore, as the patentee may not introduce new testimonial evidence at the time of the preliminary response, the petition declaration (if properly developed) should insulate the petition from being denied by the PTAB. For these reasons, most every IPR, PGR or CBM petition filed to date has been accompanied by a supporting declaration of one of skill in the art.

Declarations do not have page limits. On the other hand, the page limit on petitions is tight (60 pgs. IPR; 80 pgs. PGR/CBM). As a result, some have begun relying a bit too much on declarations in an attempt to side-step the petition limits. Last week, the PTAB designated an order from last summer “informational” to inform the public that such “incorporation by reference” strategies will result in petition denial.    In Cisco Systems, Inc. v. C-Cation Techs., LLC (Paper 12. August 29, 2014) the Board explained:

It is improper to incorporate by reference arguments from one document into another document. 37 C.F.R. § 42.6(a)(3). One purpose of the prohibition against incorporation by reference is to eliminate abuses that arise from incorporation. Rules of Practice for Trials Before The Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012); see also DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999) (Incorporation “by reference amounts to a self-help increase in the length of the [] brief[,]” and “is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). In the Petition before us, incorporation by reference of numerous arguments from [Declarant’s] 250-page Declaration into the Petition serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 250 pages of [Declarant’s] Declaration (including numerous pages of claim charts) to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions.
Accordingly, we will not consider arguments that are not made in the Petition, but are instead incorporated by reference to the cited paragraphs and claims charts of Dr. Roy’s Declaration.

While citation to a declaration (i.e., testimony) is appropriate to reference evidence supporting a petition ground, the petition must tell the story of unpatentabiity. Aggravating the situation in this case was an unrealistic number of proposed grounds presented as an index of sorts to a much longer declaration document.