Giving the Petition a Bad Haircut

The IPR Petition page limit is easy to remember—60 pages, right? Not exactly. In Shenzhen Huiding Tech. Co. Ltd. v. Synaptics Inc., IPR2015-01739 (Paper 8), the PTAB stopped reading the Petition at page 50 and denied all the challenges laid out in the final 10 pages. Talk about a bad haircut!

How did this happen? The Patent Owner used its Preliminary Response to point out that the Petitioner had effectively blown through the page limit by incorporating other documents along the way. In particular, the Petitioner cited to 3 pages of expert declaration concerning the level of skill in the art and to a 7-page annotated listing of the challenged claims, without which the Petition was “unintelligible” (id. at 21). The Patent Owner argued for complete denial of the Petition. The PTAB adopted a less drastic remedy. Instead of denying the Petition entirely for a page-limit violation, it instead included the incorporated matter in the page count at the points where it was cited and stopped reading after a combined total of 60 pages. The Petitioner’s last 2 grounds of challenge were thus incomplete, cut off from consideration, and denied.

So Patent Owners, sharpen those scissors. Keep an eye out for Petitioner tactics, such as incorporation, that can be characterized to the PTAB as an attempt to circumvent rules. Petitioners, take care, too. As IPR filings reach a steady but high filing rate, Petitioners may find the PTAB more and more inclined to limit or deny trial for seemingly modest rule infractions.

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