Tips and Tricks for Making the Most of 60 or 80 Pages!

Several recent Board Notices indicate that the PTAB will not tolerate clever attempts to get around the page limits for inter partes review (IPR) and covered business method review (CBM) petitions (60 and 80 pages, respectively). For example, the Board has indicated that footnotes, the listing of counsel (lead/backup), listing of prior art, and listing of grounds for cancellation, and block quotations all must be double spaced. See, e.g., IPR2013-00033, Papers 79, and 84 (Aug. 9 and 30, 2013).

So, what still works? Petitioners have been using fonts with smaller footprints (such as Garamond), turning on kerning, reducing overhead in the header or footer (while still heeding the 1-inch margin requirement), and experimenting with justified text and auto-hyphenation. Others have used “cross references” (such as “see above at claim X”) in the claim charts to avoid repetitive text, and still others have eliminated claim charts entirely (they are not required, see 77 Fed. Reg. 48764) from the petition, including them only as exhibits. As more institution decisions and denials come out, time will tell whether these or other techniques will ultimately succeed.