I Only Get How Many Pages?

I Only Get How Many Pages?

Anthony-DerosaBy Anthony P. DeRosa –

Nearly 500 petitions for inter partes review have been filed since the Patent Office implemented the AIA post-grant proceedings, and one of the initial challenges faced by petitioners and patent owners alike has been meeting the strict page limit requirements.  In our experience, the current page limits are manageable with careful and concise drafting, but are an issue for which the drafter must always be cognizant.

The PTAB Rules set a limit of 60 pages for IPR petitions, patent owner preliminary responses, and patent owner responses.  See 37 C.F.R. § 42.24.  Not only do parties to an IPR need to navigate this page limit, they have to do so while also complying with the formatting requirements (e.g. double spacing, margins, etc.).  37 C.F.R. § 42.6.  A party can move to waive the page limit; however, it must show that a waiver is in the interests of justice.  37 C.F.R. §42.24(a)(2).  This “interests of justice” burden appears to be a very high one as the PTAB has not yet granted a motion for waiver.

One alternative approach for dealing with the petition page limit is to “fil[e] multiple petitions directed to subsets of related claims.”  77 F.R. 48635 (Aug. 14, 2012).  For example, Atrium Medical Corporation filed four separate IPR petitions against subsets of U.S. Patent No. 7,785,334.  In all, 126 claims were challenged, which would have been difficult to fit into one 60-page petition.  See IPR2013-00186, 87, 88, and 89 (which were each granted as to all challenged claims and are pending as of the date of this posting).  Of course, filing multiple petitions requires the payment of multiple filing fees, which becomes very expensive.  See 37 C.F.R. § 42.15.

The reason for page limits is obvious:  “Federal courts routinely use page limits in managing motions practice as ‘effective writing is concise writing.’”  77 F.R. 48620 (Aug. 14, 2012).  The courts have found that page limits ease the burden on both the parties and the courts and the Board’s experience with page limits is consistent with that of the Federal courts.  Id.  The Board’s implementation of page limits encourage the parties to focus on dispositive issues, thus easing the burden of motions practice on the parties and on the Board.  Id.

While the need for page limits is apparent, however, setting that limit at 60 pages was merely an educated guess based on the Patent Office’s experience with other similar procedures.  Id., at 48621.  In addition, the judges at the PTAB “are working with stakeholders in the patent community to balance some stakeholders’ need for additional pages in their written submissions with the Board’s need to complete the post-grant reviews in a timely way.”  GAO-13-465 at 43 (August 2013).  The director of the PTO is required to study and report to Congress on how these and other provisions of AIA are being implemented no later than September 16, 2015 and according to agency officials, the PTO plans to meet this deadline.  Id.  So while it appears that page limits in post grant proceedings are here to stay, there is a possibility that the current limits could be relaxed somewhat in the future.