Takeaway: A petition must specify all claims to which each argument is relevant, and argument that is only included in a declaration may not be considered by the Board.
In its Decision, the Board denied Petitioner’s Request for Rehearing on the Board’s Decision Not to Institute an inter partes review of the ’798 patent as to the challenges based on the Janas, Warthen, and Waltz references. The Board began by discussing the standard for a request for rehearing of a decision on institution, stating that the burden of showing a decision should be modified is on the party challenging the decision; that party must show that the Board misapprehended or overlooked a matter that was previously addressed in a motion, opposition, or reply.
Petitioner argued that the Decision misapprehended the explanations in the Resubmitted Petition and an expert declaration regarding the way in which the Janas and Warthen references describe the limitation “case information.” The Board found these arguments unpersuasive, noting that the only discussion of whether Janas and Warthen disclose “case information” was in regard to dependent claim 17. Therefore, the Board could not now consider these arguments in relation to independent claims 1 and 9 because the request for rehearing is not an opportunity to supplement the initial petition. Petitioner failed to describe how the citationas directed to claims 1 and 9 regarding the Warthen reference in the Resubmitted Petition relate to “case information.” The Board further noted that Petitioner’s Request did not advise the Board how it misapprehended the particular arguments regarding Warthen’s disclosure of “case information.”
Petitioner also asserted that the Board overlooked declaration testimony describing the Janas reference. The declaration testimony was described in the Resubmitted Petition as a “summary” of the Janas reference and was not relied on specifically with regard to claims 1 and 9. The Board stated that it declines to consider information that was presented in the supporting declaration but not discussed in a petition because considering such information would encourage the use of declarations to circumvent page limits. The Board also stated that because those arguments were not in the Petition, the Board could not have overlooked them.
Apple Inc. v. Rensselaer Polytechnic Institute and Dynamic Advances, LLC, IPR2014-00077
Paper 14: Decision Denying Request for Rehearing
Dated: June 13, 2014
Patent 7,177,798 B2
Before: Josiah C. Cocks, Bryan F. Moore, and Miriam L. Quinn
Written by: Moore