In its Decision, the Board denied Petitioner’s request for rehearing of the denial of institution of review of challenged claims 1-3, 5-10, and 12-15 of U.S. Patent No. 8,474,183 (“the ’183 Patent”). Petitioner only requested rehearing on the denial of review of claim 8 and the claims dependent thereon contending that the claim construction was erroneous.
The Board stated that Petitioner essentially reasserted its arguments from the Petition in the Request for Rehearing. Petitioner wanted the Board to adopt a particular interpretation of the cited prior art, and particularly a certain figure and legend in that art. However, Petitioner failed to provide any additional evidence, such as declaration evidence, supporting that particular interpretation, and the Board found that other interpretations were possible.
Petitioner also challenged the Board’s interpretation of the term “color intensity” with respect to another obviousness ground asserted in the Petition against claim 8. Petitioner urged the Board to adopt an interpretation of “color intensity” that was similar to “color change.” However, the Board found that the plain and ordinary meaning and how the term was used in the ’183 Patent was broader and different from that urged by Petitioner. Petitioner also tried to argue that the prior art taught “color intensity” as the Board was interpreting that term. However, the Board noted that Petitioner did not make this argument in its Petition, and that a request for rehearing is not an opportunity to supplement an initial filing and make arguments a party did not make before. The Board further stated that there was no abuse of discretion in its decision even if the new argument were considered.
The Scotts Company LLC v. Encap, LLC, IPR2013-00491
Paper 11: Decision on Request for Rehearing
Dated: May 19, 2014
Patent 8,474,183 B2
Before: Lora M. Green, Rama G. Elluru, and Adam V. Floyd
Written by: Elluru