APJs Reject Inter Partes Review Request on the Merits, Applying Rigorous Review

Scott Daniels | March 5, 2013

The APJs have already shown that they insist on full compliance with the relevant rules for a party petitioning for inter partes review of a patent and for a patent owner opposing such a petition.  The APJs have now shown, in Synopsys v. Mentor Graphics, IPR2012-00041, that they are willing to deny a petition, in toto, where they see such a failure.

Synopsys sought inter partes review of Mentor’s U.S. Patent No. 6,947,882.  Synopsis’ petition acknowledged the requirement in the rules that the limitations of the claims be construed before being applied to the cited prior art, but asserted that each of the limitations could be understood according to its “plain meaning.”  The patent owner did not dispute this point, but the APJs did, finding that the key limitation did require construction and proceeding to construe it without input from the parties.

Proceeding to the application of the claims to the prior art, the APJs found that the petition’s assertions of anticipation and obviousness were conclusory.  Specifically, they failed to provide a detailed analysis of (1) how specific passages from the references relate to the claims or (2) the reasons for one skilled in the art to rearrange the prior art elements to meet the structural requirements of the claims.  In rejecting the petitions’ obviousness contentions, the APJs cited both the statute (35 U.S.C. § 312(a)(3)) and the rules (37 C.F.R. §§ 42.104(b)(4), 42.104(b)(5), 42.22(a)), to point out the gaps in the prior art analysis.  They explained that:

 Petitioner’s conclusory statements, without more detail, fail to satisfy any of the above-noted requirements and are irreparably lacking in detail.  Petitioner does not clearly provide analysis to support the assertion of obviousness over [Reference A].  The petition does not clearly point out the differences between the claimed invention and [Reference A].  Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences.  Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of [Reference A’s disclosure], to use clock signals from any of the described clocks in the manner required by the challenged claims

(Emphasis added).

Practitioners should note not only the need to comply with the rules, but also the need to address all issues from the very beginningInter partes review practice will not allow the parties to “identify” the issues and then to address them as the case proceeds.

Put all your cards on the table.  Right away.

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