Takeaway: A finding by the Board that expert testimony is unpersuasive for lack of evidentiary support is not likely to be modified through a Rehearing Request.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Final Written Decision finding claims 6 and 8 of the ’835 patent unpatentable. The standard of review for rehearing requests set forth in 37 C.F.R. § 42.71(d) places the burden on the challenging party to show that a decision should be modified. The Request must “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”

With respect to the Board’s finding of obviousness, Patent Owner argued that the Board:

disregarded evidence concerning a person of ordinary skill in the art’s view of Liebermann (Req. Reh’g 1–6); did not provide a rationale for modifying the references (id. at 6–9); and misapplied the law of obviousness by finding prior art elements individually in the prior art (id. at 11-13).

Patent Owner also requested rehearing as to the Board’s findings related to secondary considerations of nonobviousness, alleging that the Board:

misinterpreted certain data pertaining to “VCO” (id. at 11–13); misinterpreted certain data by attributing it to others (id. at 13–14); and disregarded the testimony of its declarant (id. at 14–15).

The Board found Patent Owner’s arguments unpersuasive. The Board noted that it had considered Patent Owner’s evidence concerning the Liebermann reference and explained in its Final Written Decision why the evidence was unpersuasive. In particular, the Board found Patent Owner’s evidence unrelated to Petitioner’s proposed combination, and therefore, not persuasive.

Patent Owner also argued theories of nonobviousness that were not previously raised. Thus, the Board could not have overlooked them. The Board also noted a number of Patent Owner’s arguments were reiterations of prior arguments that were already addressed in the Final Decision.

The Board then turned to Patent Owner’s secondary considerations arguments. First, Patent Owner had presented evidence comparing “CTS” usage, allegedly embodying the claims, versus “Relay” usage, not embodying the claims. In the Final Decision, the Board found that Patent Owner did not establish that “CTS” embodied the claims. Moreover, the Board found that the data included in the “CTS” designation by Patent Owner also included VCO (voice carry over), which is an old technology. Accordingly, the Board found insufficient evidence of both commercial success and nexus between the claimed invention and any alleged success. In its Rehearing Request, Patent Owner pointed to its expert testimony as providing the requisite evidence. However, the Board had considered the testimony and found it lacking in evidentiary support, and therefore, found it unpersuasive.

As to the remaining arguments, the Board noted that Patent Owner failed to identify where the arguments were previously presented. Nevertheless, the Board noted that even had the arguments been presented, the Board’s findings in the Final Decision were “based on a host of facts, none of which are dispositive.”

Finally, the Board addressed Patent Owner’s request for an expanded panel. The Board noted that none of the exemplary reasons for expanding a panel applied, including “when ‘serious questions have been raised about the continuing viability of an apparently applicable precedential decision of the Board, or a panel of the Board renders a decision that conflicts with a precedential decision of the Board or an authoritative decision of the Board’s reviewing courts.’” Even so, the Board informed the Chief Judge of the request, and the request was denied.

Captioncall, LLC v. Ultratec, Inc., IPR2014-00780

Paper 40:  Decision Denying Patent Owner’s Request for Rehearing

Dated: May 19, 2016

Patent: 6,603,835 B2

Before: William V. Saindon, Barbara A. Benoit, and Lynne E. Pettigrew

Written by: Saindon