Takeaway: A petitioner runs a risk of their petition being denied if they base their proposed rejection on a claim interpretation that the Board determines is too broad, because the petitioner is not given an opportunity to change the proposed rejections after receiving the Board’s claim interpretation with the decision on institution.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s denial of institution of inter partes review. The Petitioner’s request failed to show that the decision not to institute was an abuse of discretion. In the Decision Not to Institute, the Board disagreed with Petitioner’s proposed interpretation of at least one of the limitations in the claims. Based on the Board’s interpretation of the limitation, none of the proposed rejections anticipated or rendered obvious any of the challenged claims.

Petitioner argued in the Request for Rehearing that the Board’s interpretation of the limitation in question was broader than Petitioner’s proposed interpretation. Thus, Petitioner argued that because the Petitioner’s proposed interpretation was encompassed by the Board’s interpretation, there is a reasonable likelihood that the prior art discloses the limitation in question, when it is given the Board’s interpretation for the reasons Petitioner gave based on its proposed interpretation.

The Board was not persuaded, because such an argument was not raised in the Petition, and thus the Board could not have overlooked or misapprehended when deciding whether to institute the petition. Further, the Board did not agree with Petitioner’s argument that Petitioner’s proposed interpretation was encompassed by the Board’s interpretation.

Alcon Research Ltd. v. Dr. Joseph Neev, IPR2014-00217
Paper 23: Decision on Petitioner’s Request for Rehearing of Institution
Dated: June 2, 2014
Patent 6,482,199 B1
Before: Meredith C. Petravick, Jennifer S. Bisk, and James B. Arpin
Written by: Petravick