Takeaway: 37 C.F.R. § 42.108(a) provides the Board with authority to grant review of some or all of the challenged claims.

In its Decision, the Board granted a request for rehearing of the decision not to institute inter partes review as to claims 2-5 and 7-9 of the ’165 Patent for the limited purpose of modifying its construction of the claim term “access list of possible requesters,” but denied the request in all other respects.

The Board began by stating that when rehearing a decision on institution, the panel reviews the decision for an abuse of discretion, which occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” Per 37 C.F.R. § 42.71(d), the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.”

Petitioner made three arguments in its request: the Board erred in the construction of the term “access list;” the Board erred in determining that Granstam does not disclose an “access list of possible requesters;” and review should have been instituted on all challenged claims because the Board lacks statutory authority to institute a “partial” inter partesreview.

Turning first to claim construction, in the Decision to Institute, the Board construed the term “access list of possible requesters” of data or information as “ a series of names of possible requesters who have the right to access, or make use of,” the data or information. Petitioner argued in its request for rehearing that the construction is too narrow because it limits the list to a series of names, and the ’165 Patent states that a “list” may be “a list of defined, acceptable requestor characteristics and not just names.”  The Board agreed that the original construction was not the broadest reasonable construction, and that the claimed “list of possible requesters” need not be limited to a “series of names.”  However, the Board did not agree that the term should encompass a list of requester characteristics.

Turning then to the asserted grounds of unpatentability, the Board stated as an initial matter that the modified claim construction does not affect the institution of review of claim 1 of the ’165 Patent on the ground of anticipation by Fraccaroli. Regarding the decision with respect to Granstam, Petitioner argued that the incorrect construction of “access list” resulted in an error in analysis.  The Board, however, was not persuaded that it erred in its analysis, stating that Petitioner’s arguments in the request were not presented in the Petition; therefore, they cannot be considered for the first time in the request for rehearing.

Finally, the Board addressed Petitioner’s argument that the Board did not have statutory authority to only partially grant inter partes review because the statute provides the Board with a binary choice: to institute or not institute review of all the challenged claims identified by a petition.  The Board stated that it complied with 37 C.F.R. § 42.108(a), which was not cited by Petitioner and specifically allows for review of some or all of the challenged claims.

FourSquare Labs, Inc. v. Silver State Intellectual Technologies, Inc., IPR2014-00159
Paper 13: Decision on Request for Rehearing
Dated: August 1, 2014
Patent 7,343,165 B2
Before: Glenn J. Perry, Lynne E. Pettigrew, and Jeremy M. Plenzler
Written by: Pettigrew