Denying Request for Rehearing of Decision on Institution IPR2014-00263


Takeaway: If the inventor provides a definition of a term in the specification, that definition may be adopted by the Board even if it is not the ordinary and customary meaning of the term.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Decision Not to Institute inter partes review of claims 1-6, 8-23, and 2-27 of the ’588 Patent.  The Board began by stating that in a request for rehearing of a decision on institution, the Board reviews the decision for abuse of discretion, and the moving party bears the burden of identifying all matters that the Board misapprehended or overlooked.  Petitioner alleged three areas where the Board abused its discretion: (1) the construction of “spatial filtering” is based on an erroneous interpretation of law; (2) the determination that Kenue and Tadashi do not disclose “spatial filtering” is wrong based upon the erroneous claim construction; and (3) the determination that Yanagawa in combination with other references does not disclose “spatial filtering” is based on factual findings unsupported by substantial evidence.

The Board first addressed the construction of “spatial filtering.” The Petition stated that the construction of the term “spatial filtering” was not likely to affect the merits of the case, but now Petitioner argued that it was an abuse of discretion for the Board to erroneously interpret “spatial filtering.”  The Board’s construction of “spatial filtering” was based upon the definition provided in the specification.  Petitioner argued that the ordinary meaning of “spatial filtering” should not require consideration of a special signature.  The Board acknowledged that usually terms are given their ordinary and customary meaning, but the specification can also provide a special definition.  The Board found that is the case here, and Petitioner’s emphasis on a single passage in the Abstract and selective citation of other passages does not show abuse of discretion.  Petitioner also argued that the doctrine of claim differentiation supports Petitioner’s argument that “spatial filtering” need not include consideration of spectral signature of detected light.  However, the Board disagreed with Petitioner’s argument that the Board’s construction makes certain limitations redundant.

Turning to Petitioner’s second contention regarding Kenue and Tadashi, the Board reiterated its construction of “spatial filtering,” and stated that Petitioner has not shown that Kenue and Tadashi disclose the required “spatial filtering.”

The Board next addressed Petitioner’s allegations regarding Yanagawa combined with other references. The Board stated that its Decision included an extensive analysis of Yanagawa that concluded that Petitioner had not provided sufficient evidence showing that Yanagawa discloses or suggests “spatial filtering,” and Petitioner has not directed the Board to any persuasive disclosure in Yanagawa to support its conclusion.

The Board then addressed Petitioner’s argument that the Board erred in deciding that there was not sufficient motivation to combine the cited references. In the Decision, the Board found that Petitioner did not provide facts to support its proposed combination.  In the request, Petitioner asserted that there is no evidence that modifying Kenue to incorporate the teachings of Yanagaway would yield some unpredictable result, but did not cite to evidence in its Petition to support this assertion.  The Board found that Petitioner was merely disagreeing with its Decision, and that does not establish an abuse of discretion.

TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00263
Paper 17: Decision on Request for Rehearing
Dated: August 11, 2014
Patent 8,222,588 B2
Before: Justin T. Arbes, Barry L. Grossman, and Beverly M. Bunting
Written by: Grossman