Google Inc. and Twitter, Inc. v. EveryMD.com LLC, Denying Request for Rehearing IPR2014-00347
Saturday, July 12, 2014

Takeaway: A rehearing request of a decision denying institution must include more than a mere disagreement with the Board’s analysis in the decision and cannot raise new arguments.

In its Decision, the Board denied Petitioners’ Request for Rehearing of the Board’s decision to deny institution on two grounds of unpatentability. Petitioners argued that the Board misapprehended or overlooked: (a) the proper reading of the claims; (b) arguments and evidence supporting the non-instituted anticipation ground; and (c) arguments and evidence supporting the non-instituted obviousness ground.

The Board first noted that it reviews the decision on institution for an abuse of discretion. The request must set forth specifically all matters the Board allegedly misapprehended or overlooked, and should identify where each matter was addressed previously.

Regarding the alleged misapprehension of the reading of claim 1, the Board explained that Petitioners’ argument was based on Petitioners’ misunderstanding of the Board’s explanation in the Decision. Therefore, the Board stated that it had not misapprehended the proper reading of the claim.

With respect to the evidence of anticipation, Petitioners argued that the Petition appropriately summarized a claim recitation. However, the Board indicated that the alleged summarization constituted new arguments that were not previously presented.  Petitioners did not sufficiently identify where the arguments were previously made in the Petition, only citing to characterizations of the generic recitations of claim 1.  The Board also held that Petitioners’ arguments that the Board overlooked a claim chart, related arguments, and expert testimony, were premised on the newly-presented arguments.  Therefore, Petitioners did not establish that the Board overlooked or misapprehended anything with respect to the anticipation ground.

Finally, regarding the obviousness challenge, the Board disagreed with Petitioners’ arguments that evidence was overlooked. The Board indicated that it had considered the evidence and determined that it was insufficient.  In addition, the Board found other arguments as being improperly-presented new arguments.

Google Inc. and Twitter, Inc. v. EveryMD.com LLC, IPR 2014-00347
Paper 11: Decision on Request for Rehearing
Dated: June 30, 2014
Patent 8,504,631 B2
Before: Kristen L. Droesch, Michael R. Zecher, and Peter P. Chen
Written by: Droesch

 

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