Denying Request for Rehearing IPR2014-00697

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Takeaway: A teaching in the prior art that an asserted combination would result in a decrease in performance is not necessarily a teaching away that would result in a finding of nonobviousness.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding claims 1, 2, 4, 6, 7, 9, 11, 13-20, 23, 25, and 26 of the ’627 patent unpatentable. Continue reading

Denying Request for Rehearing Decision on Institution IPR2015-00943

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Takeaway: A request for rehearing of a denial of institution is denied where the Board did not overlook or misapprehend any relevant matters in making its decision.

In its Decision, the Board denied Petitioner’s request for rehearing of its denial of institution of inter partes review of the ’521 patent. Petitioner had argued that the Decision failed to apply broadest reasonable construction and misapprehended or overlooked several matters in the Petition. The Board was not persuaded by any of the arguments. Continue reading

Denying Request for Rehearing Regarding Public Availability of Prior Art IPR2015-01272

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Takeaway: Petitioner must provide at least a threshold showing that a non-patent reference was publicly available during the prior art time period for that reference to qualify as prior art for the purpose of determining institution.

In its Decision, the Board denied Petitioner’s Request for Rehearing. Petitioner requested rehearing on the following two grounds: “(a) Petitioner has not been afforded an opportunity to respond under the rules, and/or (b) the determination that the documents did not qualify as prior art printed publications was clear error, and therefore it was an abuse of discretion to deny institution of the inter partes review on that basis.” Continue reading

Denial Of Request for Rehearing Of Final Written Decision That Alleged Secondary Considerations Without Sufficient Evidence IPR2013-00549

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Takeaway: Patent Owner should provide specific citations to paragraphs or portions of evidence it seeks to rely upon in its assertion of secondary considerations, rather than attempt to incorporate by reference or otherwise make broad contentions regarding secondary considerations.

In its Decision, the Board denied Patent Owner’s request for rehearing. The Board modified its Decision to replace the word “captioned” with the word “voice-to-text.” This modification, however, does not affect the substance of the underlying Decision. Continue reading

Partially Granted Request For Rehearing Of Final Written Decision IPR2014-00312

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Takeaway: The Board may ignore a new argument in a request for rehearing that a previously asserted prior art reference can provide evidence of the level of ordinary skill in the art as part of an argument for unpatentability of a claim.  

In its Decision, the Board granted Petitioner’s Request for Rehearing of claims 4 and 9, but denied the Request for Rehearing for claims 3, 5, and 8 of the ’946 patent. Continue reading

Decision Denying Request For Rehearing IPR2013-00541

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Takeaway: 37 C.F.R. § 42.53 only relates to testimony taken during a testimony period set by the Board in connection with a particular proceeding.

In its Decision, the Board denied Patent Owner’s Request for Rehearing by an expanded panel of the Board’s Final Written Decision finding that claims 1-15 of the ‘482 patent are unpatentable.  Thus, the Board declined to modify the Final Written Decision.

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