By Sue Gerber and Matt Johnson

Petitioners beware.  The PTAB will not “play archaeologist with the record” or assume the burden of making arguments if the Petitioner fails to present the asserted reasons for invalidity with the required specificity.  Amazon Web Servs., Inc. et al. v. Saint Regis Mohawk Tribe, IPR2019-00103 (PTAB May 10, 2019) (Paper 22).  The PTAB rules require that a petition specify with particularity where each element of a claim is found in the prior art, and include a detailed explanation of the relevance of the prior art to the claim.  (Id. at 16.)  “[T]he petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”  (Id.)

In Amazon, the Petitioner based all of its arguments upon a faulty claim construction for a key claim term, “data prefetch unit,” that had been expressly defined in the specification to mean “a functional unit that moves data between members of a memory hierarchy.  … [A] memory hierarchy is a collection of memories.’”  (Id. at 10.)  (The petitioner proffered a significantly different construction for the term—“a functional unit that retrieves computational data needed to complete the algorithm instantiated on the reconfigurable processor during processing.” (Id. at 8.))  Thus, when the PTAB tried to evaluate the Petitioner’s prior art arguments based upon the rejected claim construction, it found them sorely lacking:

The Petition, however, does not specify with particularity how Lange teaches a memory hierarchy, and moving data between members of a memory hierarchy ….  Petitioner does not identify a memory hierarchy in Lange, much less assert that Lange teaches moving data between members of a hierarchy. …  Petitioner does not specify that these memories [Petitioner claims as being disclosed in Lange] comprise a memory hierarchy or explain why that would be the case. … Petitioner does not specify a memory hierarchy comprising a collection of memories.”

(Id. at 16-17.)

Because of these deficiencies (and similar deficiencies with respect to the second prior art reference asserted), the PTAB was not persuaded that the Petitioner had demonstrated a reasonable likelihood that it would prevail in showing unpatentability of the challenged claims.  (Id. at 17, 19.)  The PTAB also took this opportunity to explain why the lack of specificity was fatal:

By failing to address whether Lange teaches a memory hierarchy, and movement of data between members of the memory hierarchy, Petitioner has placed the burden on the Board to ascertain how the prior art allegedly reads on the challenged claims—a task we do not undertake.  The burden is on Petitioner, not the Board, to specify with particularity how Lange teaches a memory hierarchy, and moving data between members of a memory hierarchy.

(Id. at 17.)

This decision should serve as a warning to Petitioners that the PTAB will not assume the burden of determining whether the asserted prior art reference reads on the challenged claims, particularly if the Petitioner’s proffered claim construction is rejected.  It is the Petitioner’s burden to make all relevant arguments, with the required level of specificity, or risk having the Petition denied because the argument was not sufficiently detailed.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.