Inter Partes Review Denied Because Petition too Hard to Evaluate

In Zetec, Inc. v. Westinghouse Electric Co. LLCIPR2014-00384, Paper 10 (July 23, 2014), the Board declined to institute an inter partes review of a petition presenting 127 grounds of unpatentability.  The Board advised:

“Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented . . . . Thus, parties should . . . focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012).

The Board found that the petition did not comply with the Board’s rules that a petition must include “[a] full statement of the reasons for the relief requested,” placed a significant and unfair burden on the Patent Owner to respond to underdeveloped arguments for numerous asserted grounds;and placed a significant burden on the Board to evaluate fully the numerous grounds and underdeveloped assertions in the Petition to determine whether Petitioner has shown that it would be likely to prevail.

 

 

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About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University

Bryan Wheelock’s practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.

Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.

In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.