Takeaway: A petitioner in the first instance is required to satisfy its threshold burden and include evidence, arguments, and detailed explanation of the significance of the evidence; the Board will not do so for the petitioner.

In its Decision, the Board denied a request for reconsideration of the Decision to Institute that denied institution of challenges to claims 6-8 and 14 of the ’863 patent.

Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The Board stated that “[a]n abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).

The ’863 patent is directed generally to a hearing device capable of wireless communication. Petitioner argued that the Decision “misapprehended and overlooked the Petition’s discussion of Meskens’s outer body 171 as disclosing a ‘shield element’ recited in claim 6.” Additionally, Petitioner argued “that the claim chart on page 22 of the Petition shows that the secondary reference, Yoshino ’289, explicitly identifies a shield element.”

The Board rejected these arguments. The “Petition does not explain, as Petitioner argues now in its Request for Rehearing, that a review of Meskens Figure 3B ‘clearly shows that outer body 171, which is conductive and operates as the antenna (Petition at 20-21), shields the two electrically conductive receptacles 173.’” Additionally, the Yoshino reference does not provide “sufficiently detailed explanation of how the asserted references teach or suggest the claimed limitations.” The Board is not required “to search through the cited portions of both Meskens and Yoshino ’289 to map prior art disclosure with claim elements.” That is a requirement of a Petition. See 37 C.F.R. § 42.22(a)(2) (The “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”) (emphasis added). Petitioner “should not expect us to infer or create arguments from the record.” Thus, the Board was not persuaded that it erred in determining that the Petition was deficient. The deficiencies of the Petition with respect to claim 6 applied with equal force to the challenged dependent claims.

Petitioner also argued that the Board “misapprehended and overlooked evidence that Halstead discloses a ‘shield element.’” The Board was not persuaded because the annotated claim chart relied on in the request for reconsideration was not presented in the Petition. Moreover, “to the extent that the Decision to Institute ‘recognized’ features in Halstead, we are not persuaded that this . . . can remedy deficiencies in the Petition.” “It is the Petition, not the Decision to Institute, that must contain evidence and arguments sufficient to satisfy Petitioner’s threshold burden under 35 U.S.C. § 314.” Accordingly, the Board was not persuaded that it abused its discretion.

Petitioner’s request for rehearing was denied.

GN Resound A/S v. Oticon A/S, IPR2015-00103

Paper 13: Decision on Petitioner’s Request for Rehearing

Dated: June 18, 2015

Patent: 8,300,863 B2

Before: Neil T. Powell and Frances L. Ippolito

Written by: Ippolito