Fault-Tolerant System

For all of its complexities, the inter partes review system can be fairly fault tolerant.  In Debasish Mukhopadhyay v. Veolia Water Solutions & Technology Support, IPR2014-01563, Paper 4 (October 28, 2014), the Board granted the petition a filing date, despite some glaring errors:

  1. Failure to serve petition and all exhibits on the Patent Owner via Express Mail® or by means at least as fast and reliable as Express Mail®. Service may be made electronically upon agreement of the parties. 37 C.F.R. §§ 42.6(e), 42.105.
  2. Incorrect spacing. 37 C.F.R. § 42.6 requires the petition to be double-spaced, with the exception of claim charts. Block quotations may be 1.5 spaced, but must be indented from both the left and right margins. The footnotes at pages 9–10 must be reformatted.
  3. Failure to provide in a claim construction section a statement identifying how disputed or important claim terms are to be construed. See 37 C.F.R. § 42.104(b)(3).
  4. Claim charts should be included in the petition. The rules require that the petition specify where each element of a challenged claim is to be found in the prior art. See 37 C.F.R. § 42.104(b)(4). This information is to be provided pursuant to the page limit and double-spacing requirements. The element-by-element showing may be provided in a claim chart, which counts towards the page limit, but may be single-spaced. See 37 C.F.R. § 42.6(a)(2)(iii). As it circumvents the double-spacing requirement, claim charts may not contain any 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. Submitting the claim chart as an exhibit appears to circumvent the page limit set forth in 37 C.F.R. § 42.24.

While Petitioner will be very busy in the next five business days making the necessary corrections, the Petition goes forward.


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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.