Apple Inc., v. ContentGuard Holdings, Inc.

In a trio of orders addressing the extent of express explanation required in a petition for post-grant review, the Patent Trial and Appeal Board (PTAB or Board) found each petition defective for lack of explanation regarding the specific grounds on which the petition was based. Apple Inc., v. ContentGuard Holdings, Inc., Case No. IPR2015-00451 (PTAB, July 13, 2015) (Begley, APJ); Apple Inc., v. ContentGuard Holdings, Inc., Case No. IPR2015-00452 (PTAB, July 13, 2015) (Scanlon, APJ); Apple Inc., v. ContentGuard Holdings, Inc., Case No. IPR2015-00453 (PTAB, July 13, 2015) (Scanlon, APJ).

The petitioner, Apple, filed three petitions requesting inter partes review of patent owner ContentGuard’s patents. Apple relied on several prior art references and an expert declaration in challenging ContentGuard’s patents. The PTAB denied the institution based on the petitions.

In denying institution, the PTAB explained that the petitions proffered a hypothetical, integrated system that purported to combine the teachings and suggestions of the prior art references with the knowledge of a person of ordinary skill in the art. The PTAB explained that the obviousness analysis, which compared the asserted patents to prior art references, was too far removed from the actual disclosures of the prior art references, and thus obscured Apple’s position. The PTAB further noted that the petitions were riddled with vague, nested citations to broad sections of the prior art references, the expert declaration, other exhibits and other sections of the petitions without explanation. The defects in the petitions were compounded by the petitions’ repeated citations to broad sections of the expert declaration to support conclusory arguments and reasoning.

The PTAB found Apple’s practice impermissible under the PTAB rules (37 C.F.R. § 42.6(a)(3): “Arguments must not be incorporated by reference from one document into another document”); the petitions’ citations to voluminous portions of the expert declaration ran afoul of the specificity required by supporting evidence under PTAB rules.