iTakeaway: The petition should include adequate evidence to support its conclusion, and particularly to establish the public availability of the prior art. A request for rehearing is not appropriate for the addition of new evidence or arguments.
In its Decision, the Board denied Petitioner’s request for rehearing of the denial of institution of review of challenged claims 31-35 of U.S. Patent No. 8,112,504 (“the ’504 Patent”) based on the prior art references NCSA GotW, SurfPunk, and Geek of the Week Articles. In its Decision to Not Institute the IPR, the Board determined that Petitioner had not presented sufficient evidence to support that a person of ordinary skill would have been able to locate either NCSA GotW or SurfPunk. The Board also determined that Petitioner provided insufficient evidence that the challenged claims were obvious over the Geek of the Week Articles.
The Board stated that a decision on institution is reviewed for an abuse of discretion, which may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision is an unreasonable judgment in weighing relevant factors. The request for reconsideration of institution must specifically identify all matters the Board allegedly misapprehended or overlooked.
With respect to the public availability of the NCSA GotW and SurfPunk references, Petitioner argued that the Board’s determination was inconsistent with the evidence. However, the Board indicated that Petitioner essentially presented new arguments regarding public availability and explained that a request for rehearing is not an opportunity for presenting new arguments or evidence. Regarding the Geek of the Week Articles, the Board stated that Petitioner had failed to adequately organize and argue the reference in the Petition. Nonetheless, the Board had “sorted through the exhibits” to the Petition relevant to the Geek of the Week Articles and determined that they did not render any claim obvious. In denying Petitioner’s request, the Board stated that Petitioner did not show that any of the exhibits that were allegedly overlooked by the Board were distinguishable from those it considered.
Thus, the Board held that it did not abuse its discretion in determining that NCSA GotW was not a printed publication, that SurfPunk was not a printed publication, and that Exhibits 1007 and 1023-1028 of the Geek of the Week Articles did not render any claim obvious.
Electronic Frontier Foundation v. Personal Audio, LLC, IPR2014-00070
Paper 28: Decision on Petitioner’s Request for Rehearing
Dated: May 29, 2014
Patent 8,112,504
Before: Trenton A. Ward, Sheridan K. Snedden, and Gregg I. Anderson
Written by: Anderson
