By Kenny Luchesi

In 2016, the PTAB changed the limits for the length of certain filings in post grant proceedings, including petitions and responses, from limits based on the number of pages to limits based on the number of words.  The USPTO stated that this change was intended to improve efficiency within the office.  As a practical matter, however, it was also likely intended to minimize the formatting games that parties had often used to make an otherwise too-long submission fit within the page limits.  While the change may have been effective in that regard, some parties still attempt to improperly game the system.

For example, the PTAB accepts certain commonly-recognized acronyms―such as “POSA” for “person of ordinary skill in the art”―even though the use of such abbreviations will reduce the overall word count of the submission (by six words for every time the acronym is used).  However, if a party attempts to lower its word count by using other, non-standard acronyms or short-hands, the PTAB may deem this to be an improper attempt to circumvent the word limits.  In EMC Corporation v. Intellectual Ventures I LLC, IPR2017-00429, Paper No. 11 at 27-29 (PTAB July 5, 2017), the patent owner alleged that the petitioner had improperly truncated certain citations―such as using Ex1001 instead of Ex. 1001, or using ¶24 instead of ¶ 24―thus creating only one word in places where proper citation format would have counted as two words.  The patent owner argued that there were 370 of these non-standard citations, resulting in a petition that was over the word count by about 300 words.  The Board agreed, and held that the petitioner’s “use of atypical citations amounts to formatting tricks designed to avoid the word count limit for petitions set forth in our rules.”

In this instance, the penalty was not severe; the patent owner was simply permitted to file a response that exceeded the word count by 370 words―equal to the number of non-standard citations in the petition.  However, the Board does not take violations of its procedural rules lightly, and if a party attempts to play games with them, it runs the risk of having entire arguments excluded.  For example, another way parties may attempt to circumvent the word count limit is by incorporating other documents by reference.  But the PTAB’s rules (e.g., 37 C.F.R. § 42.6(a)(3)) prohibit incorporation of large portions of other documents without sufficient explanation of the incorporated material.  In Limelight Networks, Inc. v. Akamai Techs., Inc., IPR2016-01894 (PTAB Mar. 8, 2017), the petitioner submitted two claim charts as separate exhibits to the petition.  However, the petition did not explain the significance of the claim charts, the claim charts included summary language that was not included in the petition or expert declaration, and the claim charts included additional disclosures from the references that also were not cited or discussed in the petition.  In this instance, the Board refused to consider the claim charts due to a violation of § 42.6(a)(3).  Although not actually deciding the issue, the Board appeared to indicate that these claim charts were also a violation of the word count.

Given the Board’s sensitivity to violations of its rules, and the inability to predict what sanction it might employ, it is always best practice to abide by all of the procedural rules; and any substantive arguments that a party wants to be sure the Board considers should be included within the petition (and with standard citation formatting).

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Kenny Luchesi is a trial lawyer with more than 14 years of experience both as a product development engineer and as an attorney litigating complex intellectual property matters.