Cisco Systems, Inc. v. C-Cation Technologies, LLC

Paper 12, Aug. 29, 2014

IPR2014-00454 (Patent 5,563,883 B2)

FACTS

Petitioner Cisco petitioned for inter partes review of claims 1-20 of U.S.P.N. 5,563,883 B2.  Patent Owner C-Cation did file a Preliminary Response. Institution was denied.

HOLDING

It is improper to incorporate by reference arguments from one document into another document, especially to circumvent the page/word limit.  See Paper 12, p. 10.  The Board will not consider such arguments which are not found in the Petition itself.

TAKEAWAY

The IPR Petition relied on 6 U.S. patents and 5 other printed publications as prior art in the 20 grounds of anticipation and obviousness.  See Paper 12, pp. 6-7.  The IPR Petition contained footnotes citing portions of their experts’ 250-page declaration.  For instance, in 7 pages of the Petition, Petitioner cited 4 footnotes, which in turn cite 17 pages including 11 pages of claims chart of the expert declaration.  These citations are substantially more than the 7 pages of the Petition itself.  In addition, the claims charts in the Petition cite to other claims charts in the expert declaration.  See Paper 12, p. 8. Further, the rationales for anticipation or obviousness contain footnotes which is turn rely on certain paragraphs of the expert declaration.  See Paper 12, p. 9.

The PTAB explained that the use of footnotes to cite large portions of another document (e.g., expert declaration), without sufficient explanation of those portions, amounts to improper incorporation by reference. See Paper 12, p. 8.  This is also true when citing to other claims charts in another document, or when conclusory paragraphs for a proposed ground of rejection cites to numerous paragraphs of an expert declaration. See Paper 12, pp. 8-9.

One purpose of prohibition against incorporation by reference is to eliminate abuses, such as increasing the length of the Petition, and also having the Board “to sift through over 250 pages of Dr. Roy’s Declaration (including numerous pages of claims charts) to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions.”  See Paper 12, p. 10.

The Board will not consider arguments that are not made in the Petition, but are instead incorporated by reference to cited paragraphs and claims charts of the expert declaration.  See Paper 12, p. 10.

A copy of the PTAB order can be found here.