In its Decision, the Board denied Patent Owner’s request for rehearing on the Board’s decision to institute trial. Specifically, the Board instituted trial as to claims 1, 4, 5, and 8 of the ’091 Patent.  Patent Owner moved for rehearing as to the ground that claim 5 is anticipated by Azadegan.  The Board began by stating that the moving party has the burden to show that a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the panel reviews the decision for an abuse of discretion.

Patent Owner asserted that the Board misapprehended the scope of claim 5 because claim 5 requires that the “updated data elements” of one of the limitations be in existence at the time of comparison. The Board disagreed stating that nothing in the claim language requires that the updated data elements be in existence at the time of comparison.  The Board also noted that this argument was not set forth in the Preliminary Response, but still addressed the merits of it.  The Board found that neither the broadest reasonable interpretation nor the specification supported Patent Owner’s construction.  Patent Owner also asserted that the Board misapprehended Azadegan, but the Board was not persuaded by that assertion either.

Adobe Systems Inc. and Level 3 Communications, LLC v. Afluo, LLC, IPR2014-00154
Paper 13: Decision Denying Patent Owner’s Request for Rehearing
Dated: May 19, 2014
Patent 5,995,091
Before: Michael W. Kim, William V. Saindon, and Tina E. Hulse
Written by: Hulse