Paraphrasing PTAB: Avoid the Temptation to Over-Cite


In a recent decision denying a petitioner’s request for rehearing on a decision not to institute an inter partes review proceeding, the USPTO Patent Trial and Appeal Board (“the Board”) re-emphasized that “procedural defects” can kill a petition. Specifically, the petitioner’s “failure to comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5)” was a factor in the Board’s decision.   

The Board gave several procedural reasons for rejecting the petition that included “lengthy, vague, nested citations to broad sections of the record” (example above) and “pervasive use of unclear internal cross references”... “to such an extent that it obfuscates the evidentiary support for the Petition’s assertions.” The Board also cited improper incorporation-by-reference of a declaration.

The decision is IPR2015-00440, Paper 13.




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