Takeaway: If a request for rehearing of a decision denying institution presents new arguments that were not presented in the petition, then the request will be denied because the petitioner cannot show those new arguments were overlooked or misapprehended by the Board in the original decision.

In its Decision, the Board denied Petitioner’s request for rehearing of the Board’s decision denying institution of inter partes review of claims 15 and 16 of the ’536 Patent.  In particular, Petitioner argued that the Board misapprehended or overlooked: (1) that the Petition established that the real key is a “register;” (2) that the Petition established that the real key “forms part of” the file management program “container;” (3) that the Petition established that a software product file is a “container” that is “added” to the file management program “container;” and (4) that the Petition established that the real key “controls” whether a software product file container is added to the file management program container.

Turing to the first two points, the Board noted that the argument that the real key is “associated with a container” and “forms part of the container” because the prior art’s file management program generates, validates, and uses the real key was not raised until the request for rehearing and Petitioner did not direct the Board to the section of the Petition where this argument was presented. Therefore, the Board did not misapprehend or overlook the argument because it was not previously presented.  Further, the Board stated that Petitioner failed to establish that the prior art discloses that the “real key” is “associated with” and “forms part of” the file management program within the meaning of claim 15; therefore, the argument was not persuasive.

The Board then examined the third point, noting again that the argument that the “encrypted software” is the container being added was not presented in the Petition. Therefore, the argument could not be overlooked or misapprehended.  Further, the Board was not persuaded by this argument because Petitioner did not provide any evidence or rationale to support the argument.  Additionally, the alternative argument that “decrypted software” could be considered the container being added to the file management program container was both inconsistent with Petitioner’s other arguments and was not presented in the Petition.

Finally, the Board addressed the last point, finding again that this argument was not presented in the Petition and, therefore, could not have been overlooked or misapprehended. The Board also found that the argument was not persuasive.

Facebook, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00093
Paper 14: Decision on Petitioner’s Request for Rehearing
Dated: July 1, 2014
Patent 7,010,536 B1
Before: Kalyan K. Deshpande, Trevor M. Jefferson, Brian J. McNamara, Neil T. Powell, and Gregg I. Anderson
Written by: Deshpande