Takeaway: A petitioner must adequately explain all aspects of its grounds of unpatentability in the petition itself and cannot provide explanation solely in the expert declaration. 

In its Decision, the Board declined to institute inter partes review of any of the challenged claims (2, 3, 6, 9, 12, 13, 16, and 20-25) of the ’172 Patent.  The ’172 Patent relates to an electric pump for use with an inflatable mattress. The Board noted that none of the four grounds of unpatentability asserted by Petitioner includes any citation to specific portions of the references themselves, and only includes citation to the expert declaration.  Citation to the portions of the references in the expert declaration does not cure the deficiency because citations to the references must be in the petition itself.

The Board also found that the obviousness analyses for the grounds was substantially deficient because they do not state explicitly the differences between the prior art and the subject matter, do not explain how the construed claims are unpatentable, and do not adequately articulate a reason for combining the prior art.  While the expert declaration contained some information regarding these shortcomings, these arguments must be in the petition and cannot be incorporated by reference.

Tempur Sealy International, Inc. v. Select Comfort Corp., IPR2014-01419
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: February 17, 2015
Patent: 5,904,172 C1
Before: Philip J. Kauffman, Meredith C. Petravick, and Mitchell G. Weatherly
Written by: Kauffman
Related Proceeding: Select Comfort Corporation v. Tempur Sealy International, Inc. d/b/a Tempur-Pedic, No. 0:14-cv-00245-JNE-JSM (D. Minn.)