Takeaway: The Board misapprehending arguments that the prior art explicitly discloses a limitation as opposed to inherently disclosing it may lead to a granted rehearing request.

In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s decision denying inter partes review of claim 12 of the ’121 patent for being anticipated by Koster. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” who “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).

The Board agreed with Petitioner that it “misapprehended the significance of Petitioner’s argument with respect to claim 12.” The Board had “read the argument set out in the Petition as asserting that because one example of Koster describes completing a memory transaction after receiving one response, Koster’s system inherently discloses completing a memory transaction after receiving one response in all situation, no matter the number of total responses.” The Request for Rehearing, however, clarified “that Petitioner’s argument is that the example describing exactly one response, itself, explicitly discloses completing a memory transaction after receiving one response.”

Because the Board misapprehended the argument in the Petition, it went on to consider Patent Owner’s argument in its Preliminary Response that was not previously considered. “Patent Owner asserts that Koster does not disclose temporary storage for the response data associated with the probe filtering unit.” The Board, however, was not persuaded “that Koster’s disclosure is as limited as Patent Owner asserts.” On the record, the Board thus agreed with Petitioner “that a person of ordinary skill in the art would understand that the snoop filter necessarily includes a temporary storage for holding response data.” Therefore, Petitioner established a reasonable likelihood of prevailing in its challenge that claim 12 of the ’121 patent is anticipated by Koster.

Apple Inc., et al. v. Memory Integrity, LLC, IPR2015-00163
Paper 22: Decision Granting Request for Rehearing
Dated: July 1, 2015
Patent: 7,296,121 B2
Before: Jennifer S. Bisk, Neil T. Powell, and Kerry Begley
Written by: Bisk