On August 13, 2014, in Fidelity Nat'l Info. Servs., Inc. v. DataTreasury Corp., the Patent Trial and Appeal Board (PTAB) refused to consider evidence in an expert declaration and claim chart that was not also discussed in the petition for inter partes review (IPR) (IPR2014-00489, (PTAB Aug. 13, 2014)). The PTAB then declined to institute an IPR because the petition's limited analysis of the cited prior art did not establish that the challenged patent was likely unpatentable.

Fidelity National Information Services, Inc. sought an IPR of 77 claims of DataTreasury Corp.'s US Patent No. 5,910,988. Fidelity alleged seven grounds of unpatentability. Fidelity's petition included few citations to the prior art references, but instead used three levels of incorporation for its prior art analysis:

In denying institution of the IPR, the PTAB explained that 37 C.F.R. §§ 42.22(a)(2) and 42.6(a)(3) prohibit a party from incorporating by reference information and arguments in supporting documents that are not also discussed in the petition. The PTAB noted that these rules prevent circumvention of the petition page limits, among other purposes.

The PTAB found that Fidelity's extensive citation of the Gray Declaration instead of the prior art references themselves was an impermissible incorporation by reference and attempt to evade the relevant page limit. Therefore, the PTAB refused to consider information found only in the Gray Declaration and accompanying claim chart. Based on the limited prior art citations and discussion in Fidelity's petition, the PTAB found that it did not establish a reasonable likelihood that DataTreasury's claims were unpatentable.

This decision highlights: