Denying Request for Rehearing of Decision to Institute Review IPR2014-00383


Takeaway: A rehearing request of a decision instituting review will not be persuasive unless the patent owner can show that there was an abuse of discretion, or that the Board misapprehended or overlooked any material matter.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s decision instituting inter partes review of claim 1-29 of the ’318 Patent. Patent Owner asserted that the Board abused its discretion because its adopted claim construction read a limitation out of the claims, overlooked explicit associations between elements of the claims, was inconsistent with the specification, and would render the claims incapable of filtering content. Patent Owner also asserted the Board incorrectly analyzed obviousness.

First, the Board addressed the assertion that the Board’s claim construction read out a claim element. The Board determined that Patent Owner based its assertion on a misunderstanding of two sentences in the Board’s Decision to Institute. The Board had not specifically construed the claim terms Patent Owner said had been read out of the claims, and Patent Owner had not proposed any special definition for those terms in its Preliminary Response.

Second, the Board addressed the assertion that the claim construction overlooked “the direct association between the skip filtering action and the start and end indicators.” The Board notes that it directly addressed the “skip filtering action” in a subsection of its Decision labeled as such. Further, in a subsection of the Decision labeled “Filtering Action Performed Between Start and Stop Positions,” the Board linked the “skip filtering action” to the start and end positions. Because the Board addressed these issues in its Decision, the Board was not persuaded that they misapprehended or overlooked them.

Third, the Board addressed the assertion that it had incorrectly analyzed obviousness. Patent Owner argued that the Board had incorrectly applied the claim construction to the facts before the Board. According to Patent Owner, the Board did “not explain[] how Malkin could teach or suggest a skip filtering action that is associated with both a start indicator and an end indicator.” However, the Board determined that Patent Owner’s analysis of Malkin is too narrow.

CustomPlay, LLC v. ClearPlay, Inc., IPR 2014-00383
Paper 15: Decision on Request for Rehearing
Dated: August 25, 2014
Patent 7,543,318 B2
Before: Karl D. Easthom, Justin T. Arbes, and Barry L. Grossman
Written by: Grossman