Adaptics Ltd. v. Perfect Co.

Informative decision only: persuasive authority, not binding precedent. When a petition fails to identify its grounds "with particularity" under 35 U.S.C. § 312(a)(3), so that the grounds are voluminous and excessive (here, up to ten references joined by "and/or," a "catch-all" ground, and reliance on unlisted documents), the Board may, because of SAS's all-or-nothing institution, deny the entire petition under 35 U.S.C. § 314(a) in the interests of efficient administration of the Office, integrity of the patent system, and procedural fairness to the patent owner. No prior precedent directly addressed this issue; the Board builds on SAS Q&As (June 5, 2018), Question D2, and its Trial Practice Guide guidance. For petitioners, loose "and/or" combination grounds, catch-all grounds, expert reliance on references outside the stated grounds, and thin public-accessibility showings can cost the whole petition rather than just one ground. Patent owners gain a preliminary-response argument that unbounded grounds impose an undue burden, particularly given the 14,000-word limit, and that the Board need not search the record for support. The Board relied on Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) and Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016) on the petitioner's burden of particularity, and on SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) for the binary institution choice and discretion. LEGAL TEST OR STANDARD: A petition must identify "with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim." 35 U.S.C. § 312(a)(3). Because under SAS the Board institutes on all grounds or none, it "may consider whether a lack of particularly as to one or more of the asserted grounds justifies denial of an entire petition" under § 314(a), considering the efficient administration of the Office and integrity of the patent system (§ 316(b)). The Board looked at the totality of the issues. TRIGGERING FACTS: Petitioner's third obviousness ground was a "catch-all" over Bendel and Sartorius in combination with up to eight other references joined by "and/or," yielding seventeen two-reference combinations and hundreds of possible combinations. It failed to specify differences between the primary references and the claims. The first and second grounds also used many secondary references joined by "and/or" for nine essentially identical claims. The expert relied on additional references (Abrams, Bordin, Kemink, Herwig) and voluminous exhibits beyond the cited references. The petition gave virtually no analysis of public accessibility for Sartorius, Mettler, Digi-Star, and Turnage. Headings and text also conflicted, and exhibit citations were inaccurate. KEY QUOTE: "The statutory requirement for particularity in a petition for IPR takes on heightened importance when considered in conjunction with SAS’s “all-or-nothing” approach." (Paper 20, p. 17) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows the SAS Q&As (June 5, 2018), Part D, Question D2, and the Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018). PRACTICE TIP: Draft each ground as a discrete, bounded combination: no "and/or" strings, no catch-all grounds, headings matching the text, explicit identification of what each primary reference lacks, and every relied-upon document and prior-art publication showing stated in the petition itself, with accurate exhibit pin cites.