Patent Lawyer Blog
In a recent inter partes review institution decision, the Patent Trial and Appeal Board (PTAB) addressed and rejected a procedural challenge regarding word count compliance, providing guidance on formatting requirements and waiver of procedural objections.
In IPR2025-00112, Patent Owner Miracor Medical SA accused Petitioner Abbott Laboratories of circumventing the 14,000-word limit for IPR petitions through improper formatting. Patent Owner argued that Abbott’s petition “regularly omits a space when citing to exhibits (e.g., ‘Ex.1001’ vs. ‘Ex. 1001’), the expert’s declaration (e.g., ‘¶¶16–19’ vs. ‘¶¶ 16–19’), and statutes (e.g., ‘§103’ vs. ‘§ 103’).” Patent Owner claimed these formatting choices occurred so frequently that “at least 966 words have been improperly undercounted,” resulting in “an advantage to Petitioner and undue prejudice to Patent Owner.” The patent owner sought denial of the entire petition based on this alleged violation.
PTAB’s Established Standards
The Board referenced the Patent Trial and Appeal Board Consolidated Trial Practice Guide, which states that “deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered.” The guidance specifically warns against manipulative formatting designed to evade word count limitations, citing the Federal Circuit’s decision in Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015).
Board’s Analysis and Rejection
Despite acknowledging the established standards, the PTAB rejected Patent Owner’s challenge on several procedural grounds:
- Failure to Raise Timely Objection. The Board emphasized that “Patent Owner did not raise with the Board, prior to filing its Preliminary Response, any concern with the manner in which Petitioner formatted its Petition.” This failure prevented Patent Owner from seeking alternative relief, such as requesting additional word count for its own response.
- No Demonstrated Prejudice. Critically, the Board noted that Patent Owner’s preliminary response contained only “11,395 words, which is less than the 14,000 word limit.” The Board found this significant: “The fact that Patent Owner did not use the maximum number of words available, even without an increase in words, suggests that the alleged improper formatting of the Petition did not prejudice Patent Owner by preventing it from adequately responding.”
- Waiver Through Inaction. The PTAB concluded that Patent Owner “did not avail itself of the opportunity to seek relief to address any alleged undue prejudice short of denying the Petition through, for example, an increase in the word count for its own brief.”
Key Procedural Takeaways:
- Timing Matters: Parties must raise formatting objections promptly, not wait until filing substantive responses.
- Prejudice Must Be Demonstrated: Merely pointing to technical violations isn’t sufficient without showing actual harm.
- Alternative Remedies: The PTAB expects parties to seek appropriate relief rather than demanding petition denial.
- Practical Impact: Courts will consider whether alleged violations actually affected the opposing party’s ability to respond.
The case was decided before Administrative Patent Judges Annette R. Reimers, James A. Tartal, and John D. Hamann, with the decision written by Judge Tartal. The decision is Abbott Laboratories v. Miracor Medical SA, Case No. IPR2025-00112, Paper 13 (Decision Granting Institution of Inter Partes Review) (PTAB June 9, 2025).
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.