Scott Daniels | November 13, 2012
Page limits, yes, page limits. A petition seeking to initiate an inter partes review of a patent is limited by the PTO Rules to 60 pages. Rule 42.24(a)(1)(i). Waiver of the rule is possible (Rule 42.24(a)(2)), but only after a showing that such a waiver would be in the interests of justice.
But the grant of a waiver, permitting a party to exceed the 60-page limit on petitions, is not automatic, as the parties discovered last Friday in Illumina v. Columbia University, IPR2012. There, the Petitioner requested waiver, stating essentially that it needed an extra 24 pages because there were so many reasons that the claims were invalid
That wasn’t good enough for the APJs who found the waiver request to be “without supporting evidence or explanation.” “Because Illumina did not provide a sufficient basis for the relief requested, the motion is DENIED and the proposed petition is expunged from the record of the proceeding.”
What could the Petitioner have done? What should Petitioners do in the future? The APJs were quite specific. A request for a waiver should (1) “show that the additional references relied upon in the proposed petition are not cumulative to the references already relied on in the petition,” and (2) “show why additional pages [are] needed in view of the ‘length and number’ of claims challenged.” A “meaningful discussion” of both points is required.
Strict adherence to the Rules is needed if the APJs are to control their new workload. The private parties are on notice.