Cisco Sys., Inc. v. C-Cation Techs.
In a decision recently designated as “informative” and addressing the issue of using footnotes to cite to a 200-plus-page declaration to support conclusory statements in an inter partes (IPR) review petition, the Patent Trial and Appeal Board (PTAB or Board) refused to consider arguments that were not explicitly made in the petition. Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454 (PTAB, Aug. 29, 2014) (Droesch, APJ).
The petitioner filed a petition to institute an inter partes review of a patent. The petition used footnotes to cite large portions of a 200-plus-page expert declaration. For example, a seven-page section of the petition cited 17 pages of the declaration. Claim charts in the petition cited other claim charts in the declaration. The Board further found that “the petition include[d] citations to the declaration to support conclusory statements for which the petition [did] not otherwise provide an argument or explanation.”
By designating this decision as “informative,” the Board is alerting the post-issuance proceeding bar that the practice of “using footnotes to cite large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference.” In addition, the “practice of citing [a] declaration to support conclusory statements that are not otherwise supported in the Petition also amounts to incorporation by reference.” Citing to 37 C.F.R. § 42.6(a)(3), the Board explained “[i]t is improper to incorporate by reference arguments from one document into another document.” “Incorporation by reference amounts to a self-help increase in the length of the brief and is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record,” (citing DeSilva). The Board also held that “incorporation by reference of numerous arguments from [the] Declaration into the Petition serves to circumvent the page limits imposed on petitions for inter partes review.” Accordingly, the Board refused to consider arguments that were incorporated by reference rather than made in the Petition.