In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution. In its Decision on Institution, the Board instituted an inter partes review of claims 1-5 and 7 but declined to institute on claims 6 and 8. Petitioner argued that the Board had (1) overlooked reasoning in the Petition for combining certain prior art references and (2) exclusively focused on a particular citation in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), to the exclusion of other portions relevant to the Petition’s rationale to combine.
First, the Board held that it did not abuse its discretion in determining that Petitioner did not present an articulated reason with a rational underpinning to combine the prior art references. The Board indicated, contrary to Petitioner’s arguments, that it had fully considered the arguments set forth in the Petition and the expert declaration in its Decision on Institution. The Board also found another argument by Petitioner to constitute new contentions, which the Board indicated was not proper in a request for rehearing. It is Petitioner’s burden to identify and explain the specific evidence that supports its arguments in the petition itself.
Second, the Board held it did not abuse its discretion with respect to its citations to KSR in the Decision on Institution. In particular, Petitioner argued that “other pertinent portions of the KSR decision support Petitioner’s proposed motivation to combine.” However, Petitioner did not cite to or rely upon KSR in its asserted reason for combining the references. Thus, the Board held, it could not have abused its discretion or overlooked Petitioner’s position, when such a position was not set forth in the Petition.
CaptionCall, LLC v. Ultratec, Inc., IPR2013-00549
Paper 20: Decision on CaptionCall’s Request for Rehearing
Dated: April 28, 2014
Patent 6,603,835 B2
Before: Joni Y. Chang, William V. Saindon, Barbara A. Benoit, and Lynne E. Pettigrew
Written by: Saindon