There have been a few short articles floating around over the past few years that list the top (usually four or five) mistakes that petitioners have made to doom their IPR/CBM petitions. These articles sometimes refer to the need for the petitioner to pay attention to detail, but then often fail to go into detail about what those details might be.
A relatively recent institution decision emphasized one important detail that petitioners had better address if the petition relies on obviousness: the need to identify “the differences between the prior art and the claims at issue.” See Front Row Technologies, LLC v. MLB Advanced Media, L.P., IPR2015-01932, Paper No. 7 (March 25, 2016). In Front Row, the PTAB summarily rejected each of the Petitioner’s obviousness arguments, involving various prior art combinations, with virtually no analysis beyond saying that the arguments failed at least because the Petitioner neglected to identify the pertinent “differences.” Id. at 17, 19-20, 22.
While not cited in Front Row, an earlier institution decision explained forcefully why an identification of the “differences” between the art relied on and the claims is essential to the PTAB’s consideration of a petitioner’s obviousness assertion. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402, Paper No. 18 (October 21, 2015) (McKelvey, APJ). The bottom line per Johns Manville is that the “responsibility falls on a petitioner” to “explicitly” identify such “differences” or else the petitioner will have failed to sustain its burden of showing a reasonable likelihood of success.
The rationale set out in Johns Manville for requiring the petitioner to explicitly identify such “differences” emphasized two concerns. First, the PTAB noted, the “[f]ailure on the part of a petitioner to explicitly identify a difference complicates an evaluation of obviousness.” Id. at 13. In this regard, the decision explained:
A petition must make all arguments accessible to the Board, rather than ask its judges to play archaeologist with the record.
Id. Second, the PTAB observed, the “absence of an articulated difference renders it difficult to present, and have a patent owner and the Board analyze, whether a petitioner has set out ‘some articulated reasoning with rational underpinning to support the legal conclusion of obviousness.’” In Johns Mansville, the consequence was that the panel was “not… able to discern a reason why one skilled in the art would have combined information” described by the prior art or, even if combined, to determine “why the combined teachings” would have rendered the claimed subject matter obvious. Id.
As illustrated by the Front Row and Johns Mansville decisions, neglecting to identify the difference will make a difference, a particularly unfortunate difference to the petitioner.