Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: July 14, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION and ORACLE
`AMERICA, Inc.
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`Patent Owner.
`
`____________
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`____________
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER TO CORRECT NON-COMPLIANT PETITION
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`

`

`IPR2014-00949
`Patent 6,978,346 B2
`
`
`
`
`
`On June 13, 2014, Petitioner filed its initial Petition. Paper 1, “Petition.”
`The Board issued a Notice of Filing Date Accorded to Petition on June 26, 2014
`notifying petitioner that the Petition included a defect, i.e., improper usage of claim
`charts. Paper 4, “Notice.” In particular, the Notice stated the following:
`Improper usages of claim charts: Claim charts should only be
`used to provide an element-by-element showing as to how the
`prior art teaches the limitations of a claim (e.g., citations to a
`prior art reference, quotations from a prior art reference). Claim
`charts may not include arguments, claim construction, statements
`of the law, or detailed explanations as to why a claim limitation is
`taught or rendered obvious by the prior art. A mere citation to an
`expert declaration (e.g., “See Ex. 1015 ¶ 29”) in a claim chart is
`permissible, but anything more than a mere citation is improper.
`
`Paper 4, 2. The Corrected Petition filed on July 3, 2014 (Paper 6) has not corrected
`sufficiently the improper usage of claim charts. As one of many instances of
`improper usage, we direct Petitioner to the following example where, in the claim
`chart provided at page 19 of the Corrected Petition, the following is stated:
`In addition, Hathorn Fig. 5 discloses shadowing data across
`multiple disks to create a remote dual copy, which is a RAID
`architecture commonly known as RAID 1. (Ex. 1005 at 8:64-
`9:51; 12:54-60; Ex. 1003, ¶ 143.)
`
`Paper 6, 19 (emphasis added). In the above example, we find that the portion
`emphasized is a conclusion reached by a declarant and constitutes argument. As
`stated in the Notice, the use of claim charts is limited to an element-by-element
`showing, such as by providing citations to a prior art reference or quotations from a
`prior art reference. Explanations, characterizations, conclusions, or inferences
`drawn from the references are improper in a claim chart. The example provided
`above, where the source of the characterization of the prior art is a declarant’s
`opinion, is at odds with the Notice. If there is any need to explain how a reference
`
`2
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`IPR2014-00949
`Patent 6,978,346 B2
`
`
`discloses or teaches a limitation, that explanation must be elsewhere in the
`petition—not in a claim chart.
`
`Therefore, the Corrected Petition is held to be in non-compliance with the
`Notice and Petitioner will be allowed one final opportunity to correct the
`deficiencies in the petition. Failure to correct the petition will result in an order to
`show cause why the Board should not dismiss the petition and deny institution of a
`trial.
`
`
`
`Order
`
`It is
`ORDERED that the Corrected Petition is non-compliant with the Notice;
`FURTHER ORDERED that Petitioner shall arrange for a joint conference
`with the Board to discuss the deficiencies in the Corrected Petition; and
`FURTHER ORDERED that Petitioner must correct the defect(s) within
`FIVE BUSINESS DAYS from this Order.
`
`PETITIONER:
`
`Todd M. Friedman
`todd.friedman@kirkland.com
`Gregory S. Arovas
`greg.arovas@kirkland.com
`
`
`PATENT OWNER:
`
`Mathew C. Phillips
`matthew.phillips@renaissanceiplaw.com
`Derek Meeker
`derek.meeker@renaissanceiplaw.com
`Alexander C.D. Giza
`agiza@raklaw.com
`
`3
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