IPR Petitioners should Avoid Boilerplate Allegations

Scott Daniels | February 8, 2013

It is common for lawyers to include generic allegations in their pleadings and motions, for instance the boilerplate plea for relief at the end of many complaints, “and such other relief as the Court might deem appropriate.”  The notion is to invite the tribunal to consider other favorable possibilities not specifically identified in the pleading.

Such open-ended assertions, however, are not good practice in IPR proceedings, as shown by the APJs’ treatment of such a boilerplate plea in Oracle’s IPR Requests against patents owned by Clouding IP.  Oracle has petitioned for IPR of 11 Clouding IP patents and in each Petition Oracle included the following paragraph:

The references addressed below each provide[s] the teaching believed by the Examiner to be missing from the prior art and variously anticipate or render obvious the claimed subject matter.  It should be understood that rejections may be premised on alternative combinations of these same references.

Oracle clearly intended that the APJs might proactively take up the prior art references cited and craft additional rejections of the claims, not identified in the Petitions.

Nothing doing, reply the APJs.  In an “Order Denying Certain Grounds” filed in each of the 11 IPR proceedings, the APJs rejected Oracle’s invitation: the “petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that support[s] the grounds for the challenge to each claim.”  Citing various rules, the APJs added that a petition must explain how “each element of a challenged claim is found in the prior art patents or printed publications.”  The APJs therefore denied IPR to the extent that Oracle’s Petition was based on the paragraph above.

On a positive note, the specific allegations of Oracle’s IPR Petitions remain on track.  The APJs’ Orders expressly stated that Oracle’s specifically recited grounds for challenge are still alive and ripe for consideration on the merits.  Nonetheless, practitioners who want “to get off on the right foot” with the APJs are reminded that their papers should avoid generalized statements and should be limited to what is authorized by the Rules.

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