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


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.

Patent Owner alleged that the Board (1) misapprehended the law of obviousness and improperly discounted evidence of secondary considerations, (2) misapprehended administrative law in disregarding evidence of nexus and secondary considerations, (3) misapprehended Liebermann’s discussion of a party call, (4) misapprehended Liebermann’s disclosure of converting voice signals, (5) misapprehended the content of Liebermann in our background discussion of the reference, and (6) improperly issued the Final Decision with a different panel of judges than those that instituted trial.

Regarding the alleged misapprehension of obviousness and subsequent analysis of secondary considerations, the Board noted that in its Final Decision, it had merely indicated that it was persuaded by Petitioner’s reason for the alleged combination and then analyzed Patent Owner’s secondary considerations. Only after this discussion did the Board express its ultimate conclusion of obviousness of the claims. Thus, the Board was not persuaded by Patent Owner that it had misapprehended any matter related to this topic.

Patent Owner next asserted that the Board had misapprehended administrative law in disregarding evidence of nexus and secondary considerations. The Board had determined that the testimony of Patent Owner’s expert had little probative value. The Board noted that it cited proper authority for why it did so in its Final Decision. As for Patent Owner’s assertion that it had identified “strong objective indicia of non-obviousness,” the Board disagreed, noting that Patent Owner had merely provided three paragraphs of discussion which contained little or no substance. The Board stated Patent Owner’s broad assertions regarding secondary considerations do not comply with the Board’s Rules, which prohibit incorporation by reference and require specific arguments to be made in the briefs under 37 C.F.R. § 42.23. Finally, the Board stated that Patent Owner cited to no paragraphs or portions of the evidence it sought to rely upon, and developed no cogent arguments. Thus, the Board was not persuaded by Patent Owner on this point.

Next, Patent Owner asserted that the Board did not find its argument regarding Liebermann’s disclosure of “party call” compelling. The Board disagreed, stating that it had considered Patent Owner’s argument regarding a centrally switched party call mechanism and found it unconvincing because the disclosure of Liebermann provided factual support for Petitioner’s position, but not Patent Owner’s position. Consequently, the Board concluded that it had not misapprehended or overlooked any issue related to the party call limitation.

The Board reached a similar conclusion as above with respect to the converting voice signals limitation. Patent Owner, according to the Board, did not present any new arguments in this regard.

With respect to the background discussion in Liebermann, Patent Owner asserted that the Board mischaracterized Liebermann to the extent that it disclosed “providing captioned telephone service.” The Board granted Patent Owner’s request to the extent that it modified a sentence in its final decision to state that, “Liebermann discloses a method for providing voice-to-text telephone service to an assisted user communicating with a hearing user.” The Board noted that this correction does not affect any portion of its analysis and Patent Owner does not argue that the error has any consequence.

Lastly, Patent Owner asserted that the Board issued a Final Decision with less than a full panel. The Rules require at least three members of the Board to hear the inter partes review. The Board noted that it had complied with the statutory requirements for panel composition. The Board also denied Patent Owner’s request for an expanded panel since none of the reasons for expanding a panel apply to the instant case.

Paper 73: Decision on Request for Rehearing
Dated: December 1, 2015
Patents: 6,603,835
Before: William V. Saindon, Barbara A. Benoit, and Lynne E. Pettigrew
Written by: Saindon