Guidance Provided by Notices Issued in PTAB Trials as of November 26, 2012 NEXIQ 125032

. INTRODUCTION
The Patent Trial and Appeal Board (PTAB, or Board) has issued a substantial number of notices in the new PTAB trial proceedings. The new PTAB trial proceedings are: Inter Partes Reviews (IPRs); Post Grant Reviews (PGRs); Covered Business Method reviews (CBMs); and Derivation proceedings (DERs). These notices are available via the Patent Review Processing System (PRPS) interface and these notices provide guidance to the PTAB bar.i What follows is identification and analysis of the guidance provided by those notices as of 11/26/2012.

II. SUBSTANTIVE ISSUES
II.A. Relevance and Lack of Redundancy of Grounds in a Petition
Under the AIA, 35 USC 312(a)(3), as amended, and new 322(a)(3) require that "the petition identifies, in NEXIQ 125032  writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, ...." The corresponding rule in 37 CFR Part 42, Subpart A, is rule 42.22(a)(2), which states that the petition "must include: ... (2) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent." 37 CFR 42.204(b)(4) (applicable for PGRs and CBMs) requires that, "[w]here the grounds for unpatentability are GM Tech2 based on prior art, the petition must specify where each element of the claim is found in the prior art." Both rules 42.104(b)(5) and 42.104(b)(5) state that "[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge."
CBM2012-00003, NEXIQ 125032   notice 7 (expanded panel)ii clarifies how the Board exercises this discretion to require specificity and reasoning. Generally speaking, CBM2012-00003, notice 7 makes it clear that the Board will not consider multiple grounds that are facially duplicative. Here, in reviewing the petition, the Board stated:
We take this opportunity to note that multiple grounds, which are presented in a redundant manner by a petitioner who makes no meaningful distinction between them, are contrary to the regulatory and statutory mandates, and therefore are not all  NEXIQ 125032  entitled to consideration. In the present situation, the multiplicity of grounds requires so much of the petition that the Petitioner has failed to expressly identify the differences between any claim and the prior art in the Petitioner's assertions of obviousness.