APJs Give Further Guidance on Petition Arguments

Scott Daniels | December 3, 2012

In an earlier post, we reported that a panel of eight APJs had ordered withdrawal of grounds for rejection from a Petition that were redundant with other proposed grounds for rejection.  Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003.  Since then, the Petitioner has asked for rehearing, but the APJs have refused to alter their earlier order.  The APJ’s refusal gives insight into how they will treat future Petitions.

The Petitioner asked for reconsideration for two reasons.  First, it argued that it could rely solely on expert testimony to show that a particular claim limitation is known in the art, and separately and alternatively, cite a specific prior art reference to show that the limitation is known.  The APJs say no: the “references should be cited in support of the expert’s opinion.”  To propose “different grounds based separately on expert opinion and on references creates redundancy, promotes inefficiency,” etc.

More generally, the Petitioner asserted that it should be free to present different alternatives for meeting a particular claim limitation.  The APJs agreed with Petitioner’s general proposition, but added that “alternative grounds may be presented if an actual need for presenting alternatives exists and is adequately explained in the petition” (emphasis added).  The APJs conceded that the Patent Owner might later amend its claim to distinguish over the expert opinion or prior art reference.  But the APJs also noted that such an amendment may accomplished only by motion to the APJs, and that the Petitioner would be free to oppose the motion and to respond to the new issues raised by the amendment.  Clearly, the APJs want a Petition to be limited to the claims as they appear in the issued patent and not to anticipate claim changes that the Patent Owner might later make.

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