Takeaway: The Board may decline to institute inter partes review in the case where the Petition challenges an earlier version of the claims that does not appear in the patent as issued.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood of prevailing in establishing the unpatentability of any challenged claim of the ’564 patent. Consequently, the Board declined to institute inter partes review of any claim of the ’564 patent.  The Petition was thus denied, and no trial was instituted.

Petitioner had originally requested inter partes review of claims 1-13 of the ’564 patent.  In particular, Petitioner had asserted that claims 1-13 were unpatentable as having been obvious under 35 U.S.C. § 103 in view of a combination including Lederman, Mann, Best Lawyers 1987, and Best Lawyers 1983.

The ’564 patent is directed to “identifying excellent performance by individuals within a profession [such as the legal field] by using data searching and mining to provide objective indications of peer recognition and/or professional achievement.” Such identification may involve “rules and monitoring for a nomination and balloting process to identify and evaluate excellent performing candidates by one or more selected groups of peer professionals.”

The Board noted at the outset that Petitioner had not provided any affidavits, declarations, supporting evidence, or expert opinion in support of its asserted grounds of unpatentability, instead electing to rely solely on the printed publications themselves and the arguments set forth in the Petition in support of its challenge. The Board then indicated that the Petition mistakenly addressed the claims as written prior to amendment during prosecution rather than the issued version of the claims.  Moreover, the Board noted that “Petitioner’s contentions . . . restate, almost verbatim, the [pre-amendment] Examiner’s rejection from the Non-Final Office Action of June 14, 2011.”  These and other points led the Board to conclude that the Petition had not addressed the challenged claims as issued.

The Board went on to point out that Petitioner’s arguments did not adequately explain how the relied-upon references read on the limitations of the challenged claims. Instead, Petitioner had offered only conclusory statements, without providing adequate citations to the relevant portions of the references, in support of its unpatentability arguments.

Woodward/White, Inc. v. Thomas Reuters (Legal) Inc., IPR2014-00854
Paper 7: Decision Denying Institution of Inter Partes Review 
Dated: December 11, 2014
Patent:  8,412,564 B1 
Before: Joni Y. Chang, Trevor M. Jefferson, and James A. Tartal
Written by: Jefferson