Cisco Systems, Inc. v, C-Cation Technologies LLC
Paper 12, August 29, 2014
IPR2014-00454 (Patent 5,563,883)
[The Board will only consider arguments set out in the petition itself and not those incorporated by reference;
Conclusory statements and summation of references are insufficient to demonstrate reasonable likelihood of prevailing on claims of unpatentability.]
Petitioner, Cisco, Inc., filed a petition for an IPR of claims 1-20 of a C-Cation Technologies patent asserting unpatentability on the grounds of anticipation and obviousness.
The Board denied the Petition as Petitioner did not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims under 35 U.S.C. § 314(a).
Incorporation by reference is inappropriate. The Board addressed the practice of incorporation by reference employed by Petitioner in asserting the unpatentability of challenged claims. The Board explained that incorporation by reference is making one document a part of another document by reference to the former in the latter (BLACK’S LAW DICTIONARY 766-67 (6th ed. 1990)).
The Board analyzed an illustrative claim in the petition pointing out, for example, that Petitioner asserted five separate grounds of unpatentability for that claim, spanning 7 pages in the petition while using footnotes to reference portions of an expert declaration spanning a total of 11 pages. Further, the claims charts in the Petition cited to other claims charts included in the expert declaration. Petition also included citations to the declaration to support conclusory statements not otherwise supported or explained in the Petition itself. The Board noted that such practice is inappropriate per 37 C.F.R. § 42.6(a)(3). The Board explained that by incorporating numerous arguments from a 250-page expert declaration, Petitioner attempted to circumvent the page limit for IPR petitions and unnecessarily imposed on the Board’s time. The Board refused to consider arguments that were incorporated by reference in this manner rather than addressed in the Petition itself.
As to claims of unpatentability based on anticipation, the Board emphasized that Petitioner must specify where each element of the claim is found in the prior art and include a detailed explanation of the significance of the evidence (37 C.F.R. § 42.104(b)(4) and § 42.22(a)(2)). Petitioner must focus on concise, well organized arguments supported by evidence of record rather than submitting a repository of all information a judge could possible consider. Brief summaries of prior art references and general assertions that they disclose the claimed subject matter were not adequate. The Board concluded that petitioner’s analysis was deficient and did not demonstrate a reasonable likelihood that Petitioner would prevail with respect to its assertions of unpatentability based on anticipation.
As to claims of unpatentability based on obviousness, the Board reiterated that question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) the so-called secondary considerations if in evidence (Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The Board pointed out Petitioner simply provided conclusory statements to support the assertions of obviousness and did not articulate reasoning with rational underpinning explaining why one with ordinary skill in the art would modify the teachings of the applied references to arrive at the claimed invention. The Board concluded that petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail with respect to its assertions of unpatentability based on obviousness.
The Board emphasizes that incorporation by reference is inappropriate and that it will only consider arguments set out in the petition itself rather than incorporated by reference to other documents, such as an expert declaration.
With respect to asserting grounds of unpatentability based on anticipation, a petitioner must specify where each element of the claim is found in prior art and include a detailed explanation of the significance of the evidence.
With respect to asserting grounds of unpatentability based on obviousness, a petitioner must provide sufficient reasoning explaining why one with ordinary skill in the art would modify the teachings of the references to arrive at the claimed invention.
Simple summation of references and citations to them and conclusory statement of obviousness or anticipation will not suffice.
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