Denying Rehearing IPR2014-00476


Takeaway: Arguments in a petition directed to one challenged claim cannot lend support to a non-instituted challenge of another claim in a request for rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s denial of institution with respect to challenged claim 11. In particular, the Board was not persuaded that it had “overlooked or misapprehended Petitioner’s arguments because they were not presented in the Petition.”

The Board reviews decisions on institution for an abuse of discretion. The party requesting rehearing “must identify the place in the record where it previously addressed each matter it submits for review.”

Petitioner argued that the Board had overlooked or misapprehended arguments with respect to claim 11 based on certain arguments that were presented in the Petition related to claim 10. In this regard, Petitioner argued in its request that “the challenge to claim 10 discussed in the Petition addressed “the electrical pressure signal representative of the pressure measurement . . . sent before a next pressure measurement is carried out” limitation from claim 11.” However, the Board was not persuaded.  The Board found that the disclosure of the prior art reference, Oselin, relied upon with respect to claim 10 was not directed to claim 11.  Thus, the Board held that it could not have overlooked or misapprehended such arguments because they were not presented in the Petition with respect to claim 11.

Petitioner also argued that Patent Owner would not be prejudiced if the Board granted the request because claim 11 is already subject to a challenge with respect to Oselin in IPR2014-00295. First, the Board noted that the proper standard is “an abuse of discretion” rather than unfair prejudice.  In addition, the Board noted that the instituted challenge to claim 11 in IPR2014-00295 was one of obviousness over Oselin whereas the denied ground in the instant proceeding was based on anticipation and obviousness over Oselin.

Schrader International, Inc. and Schrader-Bridgeport International, Inc. v. Wasica Finance GMBH & Bluearc Finance AG, IPR2014-00476
Paper 14: Decision Denying Petitioner’s Request for Rehearing
Dated: September 11, 2014
Patent: 5,602,524
Before: Rama G. Elluru, Scott A. Daniels, and Jeremy M. Plenzler
Written by: Plenzler
Related Proceeding: IPR2014-00295