Takeaway: When requesting review of a claim that includes a means-plus-function term, a petitioner must provide a sufficient description of the corresponding structure disclosed in the specification. If the patent does not include sufficient structure, the Board will not institute an IPR.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision to institute inter partes review of U.S. Patent No. 6,362,850. The Board previously granted Petitioner’s request to institute IPR as to claims 1-7, 15-22, 24-30, and 32-35, but denied its request as to claims 8-14 and with respect to certain grounds. In its Request for Rehearing, Petitioner argued that the Board abused its discretion in refusing to institute an IPR (1) with respect to Grounds 1 and 3 for claims 8-14, and (2) with respect to Grounds 2, 5, 7, and 9-11.
Upon a request for rehearing, the decision on a petition is reviewed for an abuse of discretion. The party requesting rehearing “must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously.”
The Board first considered Petitioner’s arguments with respect to the denial of institution as to Claims 8-14 on Grounds 1 and 3. Petitioner asserted that the Board abused its discretion when it concluded that Petitioner did not provide sufficient description of the structure for the means-plus-function terms in Claim 8 (and thus, Claims 9–14). In particular, Petitioner argued that the Board applied a requirement—the sufficiency of the structure identified—as part of the determination of whether a trial will be instituted for a claim reciting a means-plus-function claim limitation, which Petitioner contended was neither part of, nor required by, 37 C.F.R. § 42.104(b)(3). Petitioner further argued that it had identified “the disclosure of the specification that describes the structure . . . corresponding to each claimed function” and that any defect under 35 U.S.C. 112 ¶ 6 was created by a defective filing by Patent Owner, for which Petitioner concludes it cannot be held responsible. The Board disagreed with Petitioner’s assertion and its reading of the rules and statute. The Board explained:
Requiring identification of the means, and sufficient means, avoids institution of a trial where the scope of the means-plus-function claims cannot be determined with precision. The trial potentially would be delayed and ultimately potentially incapable of decision on the merits of the grounds. Consequently, the panel has the discretion to determine if the trial might stray into grounds outside of the statutory authority provided for inter partes review proceedings.
The Board then considered its statutory authority to grant Petitioner’s request to institute an IPR of the challenged claims on four grounds and to decline to institute on six other asserted grounds. The Board explained that instituting review on all eleven grounds would add expense to the parties in briefing and “temporal delay to the Board in rendering a decision.” The Board further explained that “it is a long-standing part of jurisprudence that the tribunal has discretion in the conduct of its proceedings,” that 35 U.S.C. § 314(a) does not say that a review “shall” be instituted under any specific situations, and that § 316(b) requires the Board to consider the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Thus, the Board was not persuaded that any error occurred or that it had abused its discretion not to institute on the additional grounds.
Next the Board considered whether it had regulatory authority for its action. In disagreeing with Petitioner’s arguments, the Board stated:
There was no arbitrary denial; the Board carefully reviewed each proposed ground and elected to proceed on those which addressed all the claims efficiently. To be required to address every overlapping grounds in every petition without the exercise of judicial use of discretion would impact not only the ability of the Board to accomplish the directive of rendering a final decision in one year, but also the overall costs of the proceedings for the parties, including patent owners, seriously.
The Board then considered and rejected Petitioner’s arguments concerning estoppel and whether Petitioner was deprived of due process rights. The Board concluded that the question of estoppel and, in particular, whether Petitioner would be estopped from asserting in federal court the grounds not instituted, was premature. The Board also explained that “Placing reasonable limits upon the trial in order to have the proceedings move forward less expensively and more efficiently does not equate to a denial of a due process right.”
Finally, the Board also rejected Petitioner’s arguments that it could have caused the Board to evaluate all of the proposed rejections by filing multiple petitions.
Thus, the Board concluded that Petitioner had not demonstrated that the panel overlooked or misapprehended any issues or facts in its Decision to Institute and, therefore, denied the Request for Rehearing.
HTC Corporation and HTC America, Inc. v. Flashpoint Technology, Inc., IPR2014-01249
Paper 12: Decision on Request for Rehearing
Dated: March 10, 2015
Patent: 6,362,850 B1
Before: James T. Moore, Patrick R. Scanlon, and Stacey G. White
Written by: Moore