Takeaway: The original petition should include direct citations to prior art references for each and every limitation of each challenged claim.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Decision on Institution of an inter partes review, finding that the Board did not misapprehend or overlook any matter that would change its decision on institution. The Board had previously decided that Petitioner had not established a reasonable likelihood of prevailing with respect to any challenged claim of the ’988 patent or the ’137 patent.

Petitioner argued that the Decision was incorrect in not relying on citations to the Gray Declaration based on the governing statute and regulations. The Board noted that there have been some cases where the panel relied upon a claim chart attached to a declaration, but those cases did not determine that it was required to do so under all circumstances. Instead, all of those cases involved a unique set of facts that led to the decision to rely on information not explicitly discussed in the petition. Thus, the Board maintained that it was correct in its Decision not to rely on citations to the Gray Declaration where the argument was not discussed in the Petition.

The Board also disagreed with Petitioner’s argument that the Petition provided sufficient direct citations to references to support institution. For example, the Board noted that the only direct citation to prior art in the claim-by-claim analysis of claim 42 was for “at least one second local area network for transmitting data within a corresponding one of said at least one intermediate subsystem.” The corresponding analysis of claim 42 in Gray’s Declaration was found in 20 paragraphs, of which only one cited directly to prior art.

Finally, Petitioner argued that “the Gray Declaration is statutorily-allowed evidence in support of a petition, which simplifies and explains the prior art relied upon by the Petition, and specifically that the Decision did not identify any argument in the Gray Declaration that was necessary for institution, but not found in the Petition. The Board was not persuaded by this argument, because neither the Petition nor the Gray Declaration included direct citations to the prior art for every limitation of each challenged claims. The Board further stated that “[w]ithout citations to the prior art, the Petition is merely attorney argument, which is insufficient to establish a reasonable likelihood Petitioner would prevail in establishing unpatentability.”

The Board also denied Petitioner’s request to file a Revised Petition to fix the deficiencies, because Petitioner did not identify any specific authority to correct a Petition at this stage, and the Board was not persuaded that such a correction was appropriate in this case.

Fidelity National Information Services, Inc. v. DataTreasury Corp., IPR2014-00489, IPR2014-00490, IPR2014-00491
Paper 12: Decision Denying Request for Rehearing of Institution of Inter Partes Review
Dated: October 9, 2014
Patents: 5,910,988; 6,032,137; 5,910,988
Before: Michael P. Tierney, William V. Saindon, and Matthew R. Clements
Written by: Clements