Microstrategy, Inc v. Zillow, Inc.
Paper 23, April 22, 2013
IPR2013-00034 (Patent 7,970,674)
[If the same argument applies to multiple challenged claims, petitioner may indicate so in the petition instead of repeating the arguments, but petitioner may not simply omit any explanation where explanation is expected]
Petitioner Microstrategy filed a request for rehearing of the Board’s decision which denied the institution of an IPR for some of the challenged claims of Zillow’s patent. Institution of the IPR for those claims was denied because Microstrategy failed to provide any explanation for how prior art references met limitations of those claims. Microstrategy contends that although this explanation was not provided in the section of the petition dedicated to those claims, it was provided elsewhere in the petition.
Petition for rehearing denied. The Board agreed with the petitioner that 37 C.F.R. § 42 does not require that the petition conform to some specific format in demonstrating that each element of a challenged claim is found in the prior art. However, the Board held that it is improper to omit arguments from the section of the petition where the arguments are expected. Thus, it is acceptable to note within the section pertaining to a particular challenged claim that explanation can be found in some other specified part of the petition. It may also be acceptable to note that certain arguments advanced in challenging one claim also apply to some other specified claim in the petition. But it is not acceptable to simply omit any explanation and expect the Board and the opposing party to figure out for themselves which arguments are applicable to which claims.
If the same arguments apply to multiple challenged claims, petitioner does not need to repeat the claims but it must make it clear which arguments apply to which claims by making appropriate notes in relevant sections.
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