“‘Petitioner’s argument on rehearing amounts to a contention that we overlooked Petitioner’s invitation to formulate arguments on their behalf, search the record for pertinent facts, and inject our own reasoning. . . .’” USPTO Patent Trial & Appeal Board
In 3M Co. v. Evergreen Adhesives, Inc., No. 2020-1738 (Fed. Cir. June 25, 2021), the Court of Appeals for the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (“the Board”), rejecting 3M’s request for rehearing in an inter partes review of U.S. Patent No. 7,705,056 (“the ’056 patent”). As the IPR petitioner, 3M succeeded in convincing the Board that certain claims of the ’056 patent are invalid as obvious. The Board, however, determined that in its petition, 3M had failed to clearly state argument that dependent claims 3 and 4 would have been obvious and rejected 3M’s efforts to later clarify and expand those arguments in its request for rehearing.
The issue presented in the rehearing request and on appeal before the Federal Circuit was whether statements and evidence from an expert declaration could be incorporated by reference in the IPR petition to support the bare assertion that “routine optimization” of the prior art would result in certain values specified in claims 3 and 4? The Federal Circuit affirmed the Board’s determination that the referenced expert declaration statements and evidence were properly excluded from consideration under 37 C.F.R. § 42.6(a)(3), which commands, “Arguments must not be incorporated by reference from one document into another document.”
In short, this is not a case where the petitioner neglected to clearly challenge a patent claim on a specific ground and then later in the proceedings attempted to cobble stray arguments together to mount the challenge. See, e.g., IPR Petition’s Failure to Challenge Patent Claims with Particularity Forfeited Meritorious Arguments. To the contrary, there was little question that 3M had challenged claims 3 and 4 on obviousness grounds and had even submitted fulsome expert testimony and evidence in support of those challenges. The problem 3M faced was its petition’s short-hand summary of that evidence as “routine optimization” combined with specific citations to the corresponding statements of the accompanying expert declaration.
Understanding how 3M found itself in that situation, and how one might avoid similar difficulties, requires a brief discussion of the case details.
The ’056 patent claims are directed to canister-based aerosol adhesive delivery systems. Independent claim 1 recites many of the elements one would expect in such a system, such as a gas cylinder canister, hydrocarbon propellant, an aerosol adhesive mixed with a solvent, and compressed gas dissolved in the mixture. Dependent claim 3 further specifies the delivery system of claim 1 “wherein said compressed gas is pressurized in said canister to about 200 psi.” Dependent claim 4 specifies a pressure “in a range of about 160-200 psi.”
To demonstrate the obviousness of the gas pressures recited in claims 3 and 4, 3M cited two items of prior art in its petition: U.S. Patent Publication No. 2002/0161056 (“Carnahan”) and U.S. Patent No. 5,931,354 (“Braud”). See 3M, No. 2020-1738 at 5. Carnahan teaches a canister system which sprays “exactly the same” at either 120 psi or 300 psi. Id. Braud teaches a system in which the “pressure in the cylinder” is “a minimum of 220 psi and preferably about 240-250 psi.” Id. at 5-6.
Although the pressures taught in Carnahan and Braud are apparently “in the ballpark” of the pressures recited in claims 3 and 4, they demand further explanation of why a person of ordinary skill in the art (“POSA”) would start at those pressures and somehow end up at the pressures recited in the challenged claims. In its petition, 3M made its first attempt at that explanation stating only, “It was within POSA knowledge to alter the pressures in Carnahan Publication and Braud to about 200 psi [or to 160-200 psi] as part of routine optimization.” Id. at 6. That statement was followed by a citation to paragraph 117 of 3M’s expert declaration by Dr. Prud’homme. Id.
In its decision instituting the IPR, the Board commented on 3M’s abbreviated optimization argument, noting that “‘questions have been raised regarding the evidentiary support for the rationale applied by Petitioner to adjust pressures, concentrations, and percentages, through ‘routine optimization’ to arrive at the claimed values.’” Id. (citing J.A. 1942). The Board suggested, “‘The parties should address these issues during the trial.’” Id.
3M nonetheless added little more to the argument in its reply, merely describing the POSA’s optimization methodology as the selection and alteration of three variables. Id. The reply, however, did “not specifically state that one of these variables is pressure and does not specifically justify selection of a pressure value below the ‘minimum of 220 psi’ taught by Braud.” Id. (citing J.A. 4350). Apparently, neither 3M nor the patentee specifically addressed the “minimum of 220 psi” disclosed in Braud and why or why not a POSA would adjust and optimize that pressure within the scope of claims 3 and 4. Id.
After the Board rejected 3M’s challenge to claims 3 and 4, 3M requested rehearing and, in its request, expounded at length upon Dr. Prud’homme’s testimony and declaration by “devot[ing] most of seven pages to the issue of the 220 psi ‘minimum’ taught by Braud and why a person of skill would allegedly depart below this pressure to optimize [within the scope of claims 3 and 4].” Id. at 6-7. The Board refused to consider that expanded argument in 3M’s rehearing request because it “‘was not advanced in the briefing and is referenced only through citation to the expert reports.’” Id. at 7 (quoting Rehearing Decision at *3). The Board explained that “‘Petitioner’s argument on rehearing amounts to a contention that we overlooked Petitioner’s invitation to formulate arguments on their behalf, search the record for pertinent facts, and inject our own reasoning.’” Id. at 3 (quoting Rehearing Decision at *3). The Board concluded the upbraiding with, “That is not our role.” Id.
On appeal, the Federal Circuit agreed that the arguments in 3M’s petition and reply about routine optimization “are skeletal at best, and these filings do not mention the 220 psi ‘minimum’ teaching of Braud at all.” Id. The Federal Circuit further affirmed the Board’s application of Rule 42.6(a)(3) to exclude from consideration the expert declaration sections cited in 3M’s petition. That rule, which forbids incorporation by reference, was promulgated with the intent to “‘minimize[] the chance that an argument would be overlooked and eliminates abuses that arise from incorporation and combination.’” Id. at 3 (quoting 77 Fed Reg. 48,612, 48,617 (Dep’t of Commerce Aug. 14, 2012)). Consistent with the Board’s reasons for denial of rehearing, the court explained that in the absence of the rule, “the Board would be forced to ‘play archeologist with the record’ for arguments that might have been made outside the parties’ briefing.” Id.
This case puts practitioners on notice of the Board’s strengthening enforcement of Rule 42.6(a)(3)’s prohibition of incorporation by reference, as well as the Federal Circuit’s willingness to affirm that enforcement. See also Gen. Access Solutions Ltd. v. Sprint Spectrum L.P., 811 F. App’x 654 (Fed. Cir. 2020); Bos. Sci. Neuromodulation Corp. v. Nevro Corp., 813 F. App’x 572 (Fed. Cir. 2020). There is, of course, no problem with citation of expert declarations and other evidence in an IPR petition, provided that the referenced argument and evidence are adequately summarized and explained in the petition. See, e.g., Expedia, Inc. v. International Business Machines Corp., No. IPR2018-01136, 2019 WL 2511366 (PTAB June 17, 2019) (citations provided in support of petition’s clear argument).
Going forward, it may no longer be sufficient to simply “get evidence into the record” as an exhibit to an IPR petition. To the extent the substance of an exhibit or declaration bears upon the merits of the petition, the Board may rightfully refuse to consider those materials unless the petition itself sufficiently and faithfully summarizes their content. Through the lens of this case, therefore, the petition should be perceived not only as a presentation of argument but also as a road map and explanation of its supporting exhibits, declarations, and testimony.