Takeaway: Patent Owner should include all arguments in the preliminary response, including those which it believes Petitioner has conceded, or it may not be able to raise those arguments in a request for rehearing.
In its Decision, the Board denied Patent Owner’s request for rehearing of the decision to institute covered business method patent review of claims 1-6 of the ’205 Patent. The Board stated that the moving party has the burden of showing the decision should be modified, and the moving party must identify all matters it believes the Board misapprehended or overlooked and the place where each matter was previously addressed in the papers.
The Board instituted trial on the sole ground that claims 1-6 are unpatentable under 35 U.S.C. § 112, first paragraph as lacking written description support for two inter-related limitations concerning “prioritization information.” Patent Owner asserted that the Board overlooked an acknowledgement by Petitioner, misapprehended certain teachings of the ’205 Patent specification, and overlooked disclosure that provides adequate support for the disputed limitations.
Patent Owner first stated that Petitioner acknowledged that the specification describes an embodiment including “prioritization information.” Therefore, Patent Owner did not perceive any dispute that needed to be addressed in the Preliminary Response and did not need to show where its support was previously identified. The Board disagreed, finding that the statement highlighted by Patent Owner was an argument that Petitioner expected Patent Owner to make and not an acknowledgement. Therefore, the Board did not overlook the fact that Patent Owner did not previously make this argument.
Patent Owner also asserted that the Board mixed references to subscriber profiles and subscriber preferences leading to an erroneous conclusion that the specification does not satisfy the written description requirement. The Board found that these assertions were either addressed in the previous decision or presented for the first time at the hearing. The Board also noted that Patent Owner will get a chance to raise these matters in its response.
Google, Inc. v. Unwired Planet, LLC, CBM2014-00005
Paper 15: Decision on Request for Rehearing
Dated: May 9, 2014
Before: Michael W. Kim, Jennifer S. Bisk, Barbara A. Parvis, and George R. Hoskins
Written by: Parvis