Takeaway: The Board may deny a request for rehearing if the request merely rephrases arguments already rejected in the Board’s initial denial of institution.

In its Decision, the Board denied Petitioner’s request for rehearing on the ’788 Patent because Petitioner’s prior art reference Bastiani did not disclose a limitation involving a means of parsing an ATA protocol command into a series of device operations.  The ATA protocol is an interface standard that enables interaction between a computer and an attached electronic storage device.

Petitioner argued that Bastiani revealed the disputed parsing limitation because, in Petitioner’s view, Bastiani describes a process by which an ASP protocol command (a different, IP- based protocol) would be translated into an ATA protocol command, and subsequently parsed into a series of operations for an ATA device.

The Board rejected Petitioner’s characterization of Bastiani because the relevant excerpt from that reference describes a sanity-check process for a command’s header information, rather than a mechanism by which ATA device operations are derived from an incoming command.  The Board found that Petitioner had not adequately explained how Bastiani’s sanity-check process revealed a parsing limitation.  Although Petitioner asserted that Bastiani necessarily must have parsed the ASP command into a series of ATA device operations to execute its sanity-check, the Board determined that this contention merely rephrased an argument that the Board had already rejected in its initial decision.  Because the Board had not overlooked or misapprehended Petitioner’s argument in denying institution, the Board concluded that the argument did not constitute grounds to modify its decision.

Petitioner also argued that any differences between input protocols or versions of ATA standards employed in Bastiani and those utilized by the ’788 Patent were irrelevant because both processes embodied the same underlying concept—the translation of a command packet into a series of ATA device operations ready for execution.

The Board found this argument unpersuasive because the expert on which Petitioner relied to demonstrate that Bastiani must parse incoming commands in the same manner as the ’788 Patent specifically premised that conclusion on the assumption that both processes comport to the same standards.  Accordingly, the difference in the versions of ATA standards employed by Bastiani and the ’788 Patent undermined Petitioner’s reliance on Bastiani as prior art.

Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00201 
Paper 14: Decision on Request for Rehearing 
Dated: July 11, 2014
Patent 6,618,788
Before: Kevin F. Turner, Trevor M. Jefferson, and David C. McKone
Written by: McKone