Takeaway: A Petitioner’s mere reference to a claim chart appended to a declaration without presentation of a specific analysis of how the prior art reference discloses a limitation of a claim in the Petition will not be considered a contention made for that claim.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of claims 7, 15, 17, 19, 32, and 34 of the ’154 patent. The Board has instituted review of claims 1-4, 6, 8-11, 13, 14, 16, 20, 21, 24, 27, 29-31, and 33 of the ’154 patent.
According to 37 C.F.R. §42.71(c), the Board will review the Decision for an abuse of discretion. A party requesting rehearing has the burden of showing a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion or reply under 37 C.F.R. §42.71(d). Petitioner argued that the Decision erred in finding no contention was made for claim 15, and therefore, claims 17, 19, 32, and 34 as well. Petitioner argued that the Decision misapprehended evidence presented regarding claim 7.
Petitioner asserted that the Petition presents evidence that Kane discloses claim 15 because it discloses “an input that when activated allows display of data.” The Board concluded that the Petition does not relate this disclosure to any particular claim or assert that Kane displays data upon receipt of a user response to a visual alert. Petitioner argues that claims 9 and 15 were discussed together because they pertain to alerts. The Board countered that the Petition provided specific contentions for claims 9, 10, 14, 16, and 17 and, despite the heading for the section listing claim 15, the Petition did not provide specific contentions for claim 15.
Next, Petitioner argued that the Petition cites paragraph 125 of the Madisetti Declaration as addressing Kane’s disclosure of an input that when activated allows display of data. The Board concluded that the Madisetti Declaration does not relate Kane’s disclosure to claim 15 specifically. Petitioner argued that the Madisetti Declaration appended claim charts including one for claim 15, which refers to claim 9. Petitioner argued that the claim charts quote from Kane and Reilly describing an alert and headlines that, after being selected, displays the transmitted data blocks. A user can access input means to cause the message data of a received message to be displayed. The Board was unpersuaded because the analysis in the claim charts was not presented in the Petition.
The Board noted that the claim charts merely provide the preambles of claims 9 and 15 and do not provide contentions for the other limitations of claim 15. The claim chart analysis was not presented or reflected in the arguments made in the Petition, nor cited in paragraph 125 of the Madisetti Declaration. Even if they had been, they do not explain how Kane and Reilly teach a remote computing device further configured to display transmitted data blocks upon receipt of a response by a user to the visual alert as recited in claim 15. Petitioner also argued that the Decision acknowledges that claim 15 is taught. The Board disagreed, stating that the Decision discussed Petitioner’s contentions for claims 14 and 16.
Regarding claim 7, the Board concluded that it did not misapprehend evidence. The Decision stated that the Petition did not assert how the information gateway and/or transmission gateway of Kane form part of the network of servers disclosed in Fig. 1 of Yan. Thus, the request for rehearing was denied.
GOOGLE INC. v. SIMPLEAIR, INC., IPR2015-00180
Paper 20: Decision Denying Request for Rehearing in Part
Dated: June 23, 2015
Before: James P. Calve, Justin T. Arbes, Tina E. Hulse,
Written by: Calve