Apple, Inc. v. Contentguard Holdings, Inc.

Addressing the issues of voluminous petitions and obviousness, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a request to institute an inter partes review (IPR), finding the voluminous petition and attached declaration did not allow the Board to secure a “just, speedy, and inexpensive resolution.” The Board explained the petition failed to “focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Apple, Inc. v. Contentguard Holdings, Inc., Case No. IPR 2015-00356 (PTAB, June 26, 2015) (Perry, APJ).

The challenged patent was directed to providing downstream digital rights. The petition included a declaration that was used in eight separate petitions. The declaration was 342 pages and included information not relevant to the specific petition. Additionally, the petition included 61 exhibits totaling 30,298 pages, which the Apple asserted were all relied upon in the petition. However, 51 of the exhibits were not cited in the petition. Of those 51 exhibits, several were not even cited in the declaration. The Board emphasized the citation of an exhibit in the declaration does not equate to being relied upon in the instant petition because the declaration included irrelevant information to the instant petition. Based on this voluminous petition, the Board held it could not institute a proceeding under 37 C.F.R. § 42.1, which requires a “just, speedy, and inexpensive resolution.”

Additionally, the Board explained that Apple had not presented sufficient evidence to support its obviousness challenges. Apple challenged the patent as obvious in light of both a single patent and the combination of two patents. The Board concluded the petition failed to articulate clearly the differences between the prior art and what was required by the claims of the patent at issue, and as a consequence the petition failed to explain how a person of ordinary skill in the art would be able to bridge those differences. The Board criticized the petition as merely suggesting a range of possible implementations without explaining how one implementation would have been obvious in view of another. Without the specific reasoning bridging the differences between patent at issue and the prior art, the Board concluded that Apple failed to demonstrated a reasonable likelihood that it would prevail on its assertions the patent at issue would have been obvious in light of the cited prior art.

Finally, the Board pointed out the petition failed to comply with 37 C.F.R. §§ 42.8(b)(2) and 312(a)(4) because it failed to identify all related matters. Specifically, the petition did not identify two additional litigation matters involving the patent at issue as well as various matters involving continuation applications and related patents belonging to the patent owner. The Board noted that Apple was aware of at least some of these matters, as evidenced by references in the declaration. Despite Apple’s failure to properly identify all related matters, the Board found it unnecessary to determine whether to deny the petition on this basis because it denied the petition for the reasons listed above.