iTakeaway: Mere disagreement with the Board’s interpretation of a prior art reference is not a proper basis for rehearing.
In its Order, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision to Institute Inter Partes Review of claims 1-6 of the ‘005 patent because Petitioner had failed to identify any matters that the Board had overlooked or misapprehended in its initial Decision.
Petitioner asserted in its Request that the Board had applied the wrong test for anticipation of claim 1 because the Board did not recognize that a section of the relied-upon Hennige reference, namely, Hennige 4:49, disclosed an embodiment separate from other disclosed embodiments. In reply, the Board indicated that it did not recognize a separate embodiment in Hennige that linked the master unit with the checking terminal as a single host system. Therefore, the Board found that its denial of institution of claim 1 review based on Hennige was appropriate. In its Order, the Board affirmed its interpretation of Hennige 4:49 and noted that mere disagreement with its conclusion is not a proper basis for rehearing.
Additionally, the Board pointed out that Petitioner had failed to assert in its initial Petition that the description at Hennige 4:49 constituted an independent embodiment. The Board observed that the initial Petition had, in fact, relied on the other sections of Hennige that Petitioner’s Request for Rehearing had alleged were separate embodiments. Because rehearing requests “must specifically identify . . . the place where each matter was previously addressed,” 37 C.F.R. § 42.71(d), the Board concluded that Petitioner could not argue that Hennige 4:49 constituted a separate embodiment for the first time during its Request for Rehearing.
Square, Inc. v. J. Carl Cooper, IPR2014-00156
Paper 14: Order Denying Petitioner’s Request for Rehearing
Dated: June 5, 2014
Patent 6,764,005
Before: Jameson Lee, George R. Hoskins, and Kristina M. Kalan
Written by: Kalan
Related Proceedings: eCharge Licensing LLC v Square, Inc., Case No. 1:13-cv-06445 (N.D. Ill.); J. Carl Cooper and eCharge Licensing LLC v. Lee, Case No. 1:14-cv-00672 (E.D. Va.); IPR2014-00157; and IPR2014-00158
