Denying Request for Rehearing that included Argument Not Previously Raised IPR2015-01022


Takeaway: A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying inter partes review. Specifically, Petitioner sought reconsideration of Decision Denying Institution with respect to two of the asserted grounds, “namely, obviousness of claims 1, 10, and 18 of the ’494 patent over TBAV and Ji, and obviousness of claim 14 of the ’494 patent over TBAV, Ji, and Chen.”

The Board first set forth the standard for reconsideration:

A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d) (emphasis in decision).

The Board stressed that a request for rehearing “is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.”

Petitioner argued two bases for its request for rehearing: (1) that “the Board abused its discretion by finding that the Petition failed to establish that TBAV discloses deriving a ‘list of suspicious computer operations’ through its identification in TBAV of suspicious instruction that perform suspicious operations,” and (2) that the Board’s “construction of ‘database’ . . . is legal error because it is not the broadest reasonable construction,” and “[u]nder the correct broadest reasonable construction, TBAV discloses the storage of security profile data in a ‘database.’”

The Board found the first argument unpersuasive. “Notably missing from the Petition is any argument that TBAV’s heuristic flags derive a list of suspicious operations” and we “cannot have misapprehended or overlooked an argument not raised.” The Board further disagreed with the second argument: “[I]f we were to adopt Petitioner’s interpretation of database as “any structured store of data,” that would lead to the conclusion in view of Petitioner’s cited evidence that a database is “any [data that are organized in some recognized fashion (e.g., database files, word processing document files, or Web pages) and stored in the volatile and/or non-volatile memory of the various nodes participating in the shared memory system].” However, the Board was “not persuaded that ‘word processing document files’ and ‘Web pages’ are databases, although they presumably may be ‘organized in some recognized fashion’ and ‘stored in volatile and/or non-volatile memory’; nor would it be helpful to interpret database circularly as ‘any . . . database files.’”

In sum, “Petitioner has not demonstrated that we abused our discretion by not instituting inter partes review of claims 1, 10, 14, and 18 of the ’494 patent.” Request for rehearing denied.

Sophos, Inc. v. Finjan, Inc., IPR2015-01022
Paper 9: Decision Denying Request for Rehearing
Dated: January 28, 2016
Patent: 8,677,494 B2
Before: James B. Arpin, Zhenyu, and Charles J. Boudreau
Written by: Boudreau