In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision not to institute inter partes review of the ’497 Patent with respect to grounds 5-9 based on Wang and Ring. The Board began by stating that in determining whether to rehear a decision not to institute, the Board reviews the decision for an abuse of discretion, meaning the party requesting rehearing bears the burden to “identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
The Board denied Petitioner’s challenges based on the combination of Wang and Ring because the Corrected Petition failed to identify evidence to show that the prior art combination discloses the limitation “user-specified volume of liquid” or “user-requested volume of liquid.” Petitioner asserted that this should be reversed because (1) the limitation is the same as “desired acquisition volume V” recited in Wang and mentioned in the Petition; (2) the limitation was addressed in the expert declaration; (3) the limitation is met by a predetermined amount of liquid in Wang; (4) the evidence submitted by Petitioner was not considered in the Decision; and (5) the Board overlooked that the limitation is “commonplace.”
The Board found that it did not abuse its discretion in determining that Petitioner did not present evidence establishing the combination of Wang and Ring teaches the required user-specified volume. After reviewing the evidence Petitioner cited to in the Corrected Petition and claim charts, the Board found that none of it clearly correlates a teaching in Wang to the required limitation. Specifically, the Board found that the Request for Rehearing has to connect the dots in three different documents to explain that its obviousness argument of the combination encompasses the required limitation. This attempt to connect the dots as well as Petitioner’s admission that the allegedly commonplace limitation was overlooked indicated to the Board that the Corrected Petition did not make the necessary showing that Petitioner has a reasonable likelihood of prevailing on the obviousness grounds based on Wang and Ring. The Board cited to 37 C.F.R. § 42.104(b)(5) for the proposition that a request for rehearing is not an opportunity to present new arguments, and the Board does not have to give any weight to such arguments. Therefore, the Board did not consider any arguments that were not made in the Corrected Petition.
The Board then turned to Petitioner’s expert declaration and Petitioner’s argument that the statements in the declaration “clearly equated the desired acquisition volume V [of Wang] with the user-specified volume [of claims 1 and 11].” However, Petitioner did not show where those sections of the declaration were relied upon in the Corrected Petition, and the Board found they were not. The Board held that citing to a declaration to support conclusory statements is equivalent to incorporation by reference, which is improper. Therefore, the Board would not consider such arguments.
Regarding, Petitioner’s argument that Wang’s disclosure of a predetermined amount of liquid meets the required limitation, the Board found that the support for this argument comes from a claim construction in a related proceeding that was not argued in the Corrected Petition. Therefore, the Board did not consider the argument. Likewise, regarding the evidence that Petitioner argued was not considered in the Decision, the Board found that these arguments were not presented in the Corrected Petition and could not be considered on Request for Rehearing.
A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511
Paper 16: Decision on Petitioner’s Request for Rehearing
Dated: September 10, 2014
Patent 8,534,497 B2
Before: Linda M. Gaudette, Donna M. Praiss, and Scott E. Kamholz
Written by: Praiss