Decision Denying in part, Granting in part Request for Rehearing IPR2013-00472


Takeaway: The Board may grant a motion requesting rehearing on a decision for institution if a party can point to statements by the Board that directly contradict the known law on a subject.

In its Decision, the Board granted in part and denied in part Patent Owner’s Request for Rehearing on the Decision for Institution. Patent Owner’s request was based on two grounds: (1) that the Board misinterpreted the governing law regarding inherency; and (2) that the Board provided an improper construction of the claim term “concave.”  The Board stated that it reviews a rehearing of a decision on institution for an abuse of discretion, which can be determined if the decision was based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents unreasonable judgment in weighing relevant factors.

The Decision on Institution included two grounds of unpatentability: (1) that claims 1-4, 8-12, and 16 were anticipated by Minneman; and (2) that claims 1-4, 8-12, and 16 were obvious over Minneman and Takashi. Regarding the first ground, the Board found that Minneman disclosed the claim limitation “concave props,” as recited in claims 1 and 9.  Regarding inherency in the application of anticipation, Patent Owner took issue with statements by the Board that it was “conceivable that the process of Minneman” could contain the required disclosure.  Citing to Federal Circuit law, the Board agreed with Patent Owner that it misapplied the standard for inherency, which requires more than probabilities or possibilities, and that institution should not have included the unpatentability ground of claims 1-4, 8-12, and 16 as anticipated by Minneman.

Regarding the obviousness ground for unpatentability, Patent Owner argued that Takahashi also did not disclose “concave props.” In rejecting this argument, the Board stated that Patent Owner was inappropriately requesting the Board reconsider both obviousness references separately; however, obviousness requires them to be applied together.  Further, Patent Owner made the same argument in the Preliminary Response, and the Board did not overlook it in the Decision.

PNY Technologies, Inc. v. Phison Electronics Corp., IPR2013-00472
Paper 16: Decision on Request for Rehearing
Dated: April 23, 2014
Patent 7,518,879
Before: Kevin F. Turner, Stephen C. Siu, and Rama G. Elluru
Written by: Turner