PTAB Tells Apple “OMG, TMI”

Posted by Ed Walsh on Jun 30, 2015

In denying a petition for IPR, the PTAB criticized Apple for presenting too much information—61 exhibits totaling 30,298 pages. That volume of information, some of it not relevant to the challenges presented in the petition, made it impossible to conduct an IPR trial with the speed required, the PTAB complained.

Those complaints serve more as a warning to others rather than the basis for denial of Apple’s petition. Besides the data dump, the PTAB found essential elements missing from the petition, which was the actual basis for denial. Key to the denial was a failure to state in the petition a full case of obviousness, including an explanation of how and why the primary reference would have been modified by one of skill in the art to add up to what is claimed.

In another warning, the PTAB also faulted Apple for not presenting a complete list of related proceedings. The PTAB appeared willing to overlook proceedings of which Apple might not have been aware, but was less forgiving for related proceedings discussed in its data dump. 

For similar reasons and with similar criticism, the PTAB denied two other IPRs (with a fourth still pending without decision as of June 29), challenging the same patent based on other references, reinforcing the point that burying the PTAB in paper is not the way to win an IPR.

Takeaways

IPRs are not litigation. They are a special type of adversarial proceeding conducted by APJs with unique concerns. Remember that the PTAB operates under a Congressional mandate to complete IPRs in a year, and remember its Rule #1: All other rules will be applied “to secure the just, speedy, and inexpensive resolution of every proceeding.”

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