Takeaway: Arguing that a new or expanded claim construction as compared to what was argued in the Petition was not persuasive in a request for rehearing.

In its Decision, the Board denied Petitioner’s request for reconsideration because the Board determined that Petitioner had not met its burden to show it is more likely than not to prevail. Petitioner had provided an initial claim construction in its Petition, which the Board accepted.  However, in this request, Petitioner urged that the Board now read the claims to include another embodiment of the ’768 patent specification, stating that the Board had overlooked that embodiment.  The Board was not persuaded to amend its decision on claim construction, because the newly proposed interpretation was inconsistent with the plain language of claim 1.

Petitioner also urged, even under the Board’s claim interpretation, that the prior art reference in the obviousness grounds of unpatentability discloses “the ability to retrieve a web page under the direction and control of a controller means.” The Board concluded that contrary to Petitioner’s assertions, the prior art reference did not teach that the feature in one of its embodiments could be combined with features in another of its embodiments to include all of the features of the claims, because those embodiments were discrete.

Netflix, Inc. v. OpenTV, Inc., IPR2014-00274
Paper 14: Decision on Rehearing
Dated: August 14, 2014
Patent 6,018,768
Before: Sally C. Medley, James T. Moore, and Justin Busch
Written by: Moore
Related Proceedings: OpenTV Inc. v. Netflix, Inc., No. 1-12-cv-01733 (D. Del.); IPR2014-00252; IPR2014-00267; IPR2014-00269