Beware Of PTAB Rules Against Lengthy Submissions

By Anthony Pisano
The USPTO’s final rules for petitions and motion practice impose limits on page lengths of various submissions in post grant proceedings under the America Invents Act (AIA). These rules are set forth in 37 C.F.R. 42.20 – 42.25. Perhaps most notable is the 60 page limit for petitions to initiate inter partes review and the 80 page limit on post grant review petitions in section 42.24. In addition, section 42.6 requires that all papers be double spaced and be in 14 point font characters. Although the rules provide for relief when necessary in “the interests of justice,” so far, the Patent Trial and Appeal Board (PTAB) has insisted upon strict adherence to the rules.

To implement the AIA’s new provisions for post grant challenges to patents before the PTAB, the USPTO initially proposed new rules in Part 42 of 37 C.F.R. in February 2012. In particular, proposed section 42.24 addressed page limits for petitions, motions, oppositions, and replies. This section was proposed to make the rules consistent with the recently amended 35 U.S.C. §316(b) and 35 U.S.C. §326(b), which provide considerations that are to be taken into account when prescribing regulations, including the integrity of the patent system, the efficient administration of the USPTO, and the ability to timely complete the trials.
The USPTO’s reasoning was that federal courts have found page limits ease the burden on both the parties and the courts. The USPTO noted that page limits were successfully instituted in the 1990s, and when certain page limits were lifted in 2006, it created too much of a burden on the predecessor to the PTAB, the Board of Patent Appeals and Interferences (BPAI). As a result, they recently reverted back to the 1990s rules. Accordingly, the USPTO proposed that 37 C.F.R. §42.24 provide for the following page limits:

• Petitions requesting inter partes review and derivation proceedings: 50 pages;
• Petitions requesting post grant or covered business method review: 70 pages; and
• Motions: 15 pages.

Oppositions would be subject to the same page limits as their corresponding motions. The USPTO noted that the page limits could be lifted if a party could show why the page limit is unduly restrictive in the interests of justice. A party could contact the Board to arrange for a conference call to discuss the need for additional pages for a particular motion, which must be granted in advance of filing a motion, an opposition, or a reply for which the waiver is necessary.

After receiving comments regarding the proposed rules, the USPTO amended Section 42.24 to increase the page limits to 60 pages for petitions requesting inter partes review and derivation proceedings and 80 pages for petitions requesting post-grant review and covered business method patent review. The corresponding oppositions would also be increased to these page limits. The USPTO further noted that in an effort to provide additional page space for arguments, it had amended §42.6 to allow for single spaced claim listings and §42.22 to allow the statement of material facts to be omitted. To recap, the final rules provide:

• Petitions requesting inter partes review and derivation proceedings: 60 pages;
• Petitions requesting post grant or covered business method review: 80 pages; and
• Motions: 15 pages.

However, the PTO refused to loosen the requirement that requests to waive the page limit be would be in the interests of justice. As stated by the USPTO: “… exceptions to the page limits are not anticipated to be granted commonly. Lowering the standard from ‘the interests of justice’ to ‘good cause’ likely would result in a large increase in the number of page limit waivers granted, with corresponding adverse impact on the ability of the Board to complete the proceeding effectively and timely.” The USPTO noted that the “interests of justice” standard “…is specific to the particular facts of the proceeding and must be made on a case-by-case basis.”

To date, the PTAB has yet to find that a petitioner has met the “interests of justice” burden. In the case of Illumina, Inc. v. Columbia University (IPR2012-00006), the PTAB denied Petitioner Illumina’s motion to waive the page requirement because a sufficient basis for the relief requested was not provided. It its motion, Illumina alleged 22 grounds of unpatentability against 12 claims, as well as 10 additional grounds of unpatentability against the same claims, 6 of which rely on new references. Illumina argued that the 60 page limit should be waived because it would be an insufficient amount of space to properly address patentability with the number of invalidating and noncumulative prior art references that were available, as well as the length and number of the challenged claims. The PTAB concluded that Illumina did not provide any meaningful discussion as to why 60 pages would not be sufficient. Because of this lack of meaningful discussion to provide a reasoning for waiving the page limit, the PTAB denied Illumina’s motion.

In another case involving Illumina and Columbia University (IPR2013-00011), the PTAB once again denied Illumina’s motion to waive the page limit so that it could file a petition that was 76 pages in length. The PTAB stated that an argument that the number of invalidating and noncumulative prior art references and the length and number of claims challenged, without supporting evidence or explanation, was not sufficient to satisfy the burden of “in the interests of justice.” The PTAB further stated that appending the proposed petition, as Illumina did in this case, was not enough to show a meaningful reasoning for why the page limit should be waived.

Other petitioners have attempted to sidestep the page length issue by filing multiple petitions. This may be achieved (1) by filing different petitions for different subsets of claims or (2) by filing separate petitions raising different grounds. The PTAB has granted several petitions that use the first approach, but has denied several petitions that have used the second approach (ostensibly because the different grounds were “redundant).” However, for some petitioners, the cost of multiple petitions (~$23,000 each) may be prohibitive.

A third approach may be to omit the claim listing from the petition itself and instead insert it as part of an affidavit in an appendix, which is not subject to the page limit. To date, the PTAB has not substantively addressed this tactic.

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