IPR Incomplete: PTAB Fails to Initiate Indefinite IPR Petition
By: Katie Rubino
Recently on March 6, 2019 the Patent Trial and Appeal Board (PTAB) issued a decision as to whether to initiate a petition for inter parties review (IPR) filed by Adaptics Limited (“Adaptics”) filed against Perfect Company’s (“Perfect”) patent 9,772,217 (‘217). The ‘217 patent discloses a system and method for assisting a user in assembling a culinary combination according to a recipe. The system includes a scale that communicates with a computing device that displays information such as the progress a user achieves as the culinary combination is assembled.
Adaptics challenged nine claims of the ‘217 patent, of which all nine are independent claims. Adaptics asserted both ⸹102 novelty rejections and ⸹103 nonobviousness rejections. Adaptics listed seventeen possible combinations of references to establish novelty and nonobvious rejections, while using indefinite language consisting of “and/or” terminology to create hundreds of other possible combinations of the seventeen references.
Under 35 U.S.C. ⸹312(a)(3) a petition for IPR must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” In Harmonic Inc. v Avid Tech., Inc., the Federal Circuit stated “[i]n an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”
Upon denying the claim for the IPR petition, the PTAB reasoned that 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.”
Under 35 U.S.C. ⸹314(a), an IPR can be initiated only if the petitioner meets the required standard of proof that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim in the petition. Under the recently decided case SAS Institute Inc. v. Iancu, the PTAB is required to make an all or nothing decision as to whether or not to institute an IPR. The all or nothing decision requires the PTAB to “institute as to all claims or none.” However, even if a petitioner has established the reasonable likelihood standard, institution of an IPR remains discretionary.
The Office Patent Trial Practice Guide (Guide) offers guidance to elaborate on this discretionary standard by offering an example of when a petition contains voluminous or excessive grounds. The Guide states “[t]he panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied under 35 U.S.C. ⸹314(a).
After reviewing all relevant evidence, the PTAB did not institute an IPR proceeding against Perfect. The PTAB reasoned that the petition filed by Adaptics lacked particularity and results in voluminous and excessive grounds. The PTAB reasoned that the lack of definite language as evidenced by “and/or” terminology utilized throughout the petition resulted in a lack of sufficient particularity. The PTAB concluded by stating that Adaptics had failed to meet the particularity requirement of 35 U.S.C. ⸹312(a)(3).
To summarize, this case is significant in that it highlights the importance of making succinct and direct arguments when initiating an IPR. At a time when the number of IPRs petitions filed each year continues to increase, a more through vetting process as to when an IPR should be initiated is paramount to enforce the integrity of IPR proceedings. An approach that includes throwing a bunch of darts at a wall and hoping one will stick is not an effective approach. Rather, working with IP counsel to establish a few well drafted and concise arguments that create genuine grounds for initiating an IPR is critical to success.