Under the America Invents Act (“AIA”), petitioners may request inter partes review of another’s patent by filing the appropriate fee and paperwork with the U.S. Patent Office. As you’d expect, there’s a boatload of rules and regulations that govern the inter partes review process.
For example, “incorporating by reference” in inter partes proceedings before the Patent Trial and Appeal Board (“PTAB”) is a big no-no. What exactly is incorporating by reference? That’s when one document requires the reader to consult yet another document(s) to figure out exactly what is being stated. As the Board explains it, incorporating by reference is an attempt to circumvent the page limit for briefs and forces the judges to “play archeologist with the record.”
In late, 2014, Cisco Systems filed a petition for inter partes review of C-Cation Tech’s U.S. Patent 5,563,883. The ‘883 patent discloses two-way multi media communication services on a multiple-access communication system.
Cisco used footnotes throughout its petition, which referred back to paragraphs from the 250-page declaration of Dr. Sumit Roy. In other words, Cisco was using footnotes to cite large portions of another document, according to the PTAB, without sufficient explanation of those portions. In the PTAB’s view, that amounted to impermissible incorporation by reference (see e.g., 37 CFR Section 42.6(a)(3)).
As such, the PTAB refused to consider those arguments in Cisco’ Petition that it advanced by referring back to Dr. Roy’s declaration (PTAB’s decision is here). The PTAB then went on to note that Cisco’s Petition did not specify sufficiently where each claim element is found in the applied prior art references and that Cisco did not include a detailed explanation of the significance of the quotations and citations from the applied references.
While supplementing the record with a declaration of one skilled in the relevant art is permitted and desirable, the declaration should play a supporting role. As the PTAB decision shows, the petition itself has to present the “meat” of the Petitioner’s argument.
Unfortunately for Cisco, the PTAB found that its Petition failed to show a reasonable likelihood that Cisco could prevail in showing that claims 1-20 of the ‘883 patent are unpatentable.