Patent Lawyer Blog
In a recent Patent Trial and Appeal Board (PTAB) decision, the particularity requirement emerged as a critical factor in determining whether to institute an inter partes review (IPR). The case, involving IKEA Supply AG’s challenge to Everlight Electronics’ LED patent, highlights how failing to meet this requirement can doom even technically meritorious patent challenges.
Understanding the Particularity Requirement
The particularity requirement, codified in 35 U.S.C. § 312(a)(3), demands that IPR petitions identify “with particularity, each claim challenged, the grounds on which the challenges to each claim are based, and the evidence that supports the grounds for challenge to each claim.” As the Federal Circuit emphasized in Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.'”
Why Particularity Matters
The requirement serves multiple purposes: it ensures efficient review, provides fair notice to patent owners, and prevents what some practitioners call “kitchen sink” petitions that overwhelm both the Board and respondents with numerous alternative theories.
IKEA’s Petition: A Case Study in What Not to Do
The IKEA petition failed the particularity requirement in several ways. Most notably, its Ground 3 relied on combining a primary reference (Shin) with “one or more of Terashima, Sugimoto, Uemura ‘259, Uemura ‘999 and/or Inoue (Collectively the ‘Thin Film Art’).” The Board noted this created “potentially at least 25 different combinations of Shin with the cited Thin Film Art.”
Making matters worse, IKEA then “compounds the multiplicity of potential combinations” by further combining these 25 combinations with additional references in Grounds 4-11. The Board found this approach particularly puzzling given IKEA’s own argument that “using thin film electrodes as taught in each of the Thin Film Art was well-understood, common knowledge, predictable, and routine in 2003.”
The “Catch-All” Problem
Ground 12 of IKEA’s petition exemplified another common pitfall. The Board described it as analogous to a problematic “catch-all” ground that was “not reasonably bounded in scope and unduly burdensome for both the Board and Patent Owner to address.” This ground alleged obviousness based on “Grounds 1, 4-8, and 11 regarding Terashima in view of Sugimoto, Uemura ‘259, Uemura ‘999 and/or” the ordinary level of skill in the art.
The Consequences
Even though some individual grounds might have had merit, the Board exercised its discretion to deny the entire petition. In deciding whether to institute a trial, the Board must either institute as to all claims and challenges or as to no claims and deny institution, but it cannot institute on fewer than all claims or challenges in a petition. See 37 C.F.R. § 42.108(a). As the Board explained: “Even, if we were to determine that Petitioner met its burden to establish a reasonable likelihood that one or more claims are anticipated by either Terashima or Sugimoto [Grounds 1 and 2], in order to address all challenged claims… we would need to address at least Grounds 3, 11, and 12. Such an undertaking would be unduly burdensome for the Patent Owner and inefficient for the Board.”
Lessons for Practitioners
This decision offers valuable lessons for patent challengers. Rather than presenting numerous alternative combinations of references, petitioners should focus on their strongest arguments and clearly explain why each specific combination is necessary. When multiple references are cited for similar teachings, practitioners should consider whether all are truly needed or if one reference might suffice.
The decision also suggests that when common knowledge or routine practice is alleged, relying on fewer references might actually strengthen rather than weaken the petition. As the Board noted, IKEA’s citation of multiple references for “well-understood, common knowledge” actually undermined its position by creating unnecessary complexity.
The particularity requirement thus serves as both a procedural and strategic constraint, encouraging focused, well-reasoned challenges rather than scattershot approaches to patent invalidation.
This inter partes review was decided by Administrative Patent Judge Arthur M. Pleslak writing for a panel that included Judges Nabeel U. Khan and Steven M. Amundson. IKEA SUPPLY AG, Petitioner, v. EVERLIGHT ELECTRONICS CO., LTD, Case No. IPR2024-00988, Paper 6 (PTAB Dec. 12, 2024).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com