Takeaway: When the Final Written Decision interprets claims under the “broadest reasonable construction” standard and the patent expires approximately 2 weeks later, the Board will not reevaluate its adopted claim construction decision under the Phillipsstandard in a Decision on a Request for Rehearing.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Final Written Decision, which found that Petitioner had shown by a preponderance of the evidence that all challenged claims in the instituted proceeding are unpatentable.

In its Request for Rehearing, Patent Owner argued that the Board “applied the wrong claim construction standard to the challenged claims, . . . overlooked and misapprehended the legal significance of [Patent Owner’s] nonobviousness arguments, and . . . failed to address all of the factors considered in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).”

The Board began by reviewing the standard for a request for rehearing. It explained:

A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply.

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An 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.

Turning to the Patent Owner’s arguments, the Board first considered Patent Owner’s argument that the Board applied the wrong claim construction standard to the challenged claims. The Board disagreed with Patent Owner’s contention that it should have used thePhillips standard instead of the “broadest reasonable claim construction” standard, stating that “[t]he fact that the ’310 Patent expired on April 11, 2015, does not alter whether the correct standard was applied at the time that Final Written Decision was issued, on March 25, 2015” and that Patent Owner had the opportunity to amend its claims during the proceeding. The Board declined to “reevaluate [its] adopted claim construction under another standard,” having been persuaded that the “Decision on Request for Rehearing is not the proper vehicle to perform such a reevaluation.”

Next, the Board considered Patent Owner’s argument that “[a]s a matter of law, it would not have been obvious to have used binary object identifiers 74 in an access control system to determine whether access is authorized or unauthorized in view of Woodhill and Stefik.” The Board explained that it had addressed the Patent Owner’s argument in the Final Written Decision and that it was “not persuaded that we overlooked or misapprehended that prior argument.”

Finally, the Board considered Patent Owner’s argument that “the Final Written Decision failed to address all of the factors provided in Graham” and that it overlooked factors (2) and (3) in particular. The Board explained that Patent Owner was “mistaken, however, in that a final written decision is not an office action containing a rejection that must provide a complete evaluation of the Graham factors to conclude obviousness.” Instead, “[a] final written decision determines if a petitioner has shown by a preponderance of the evidence that subject claims are unpatentable [and] need not make findings as to all of the Grahamfactors, as long as Petitioner has provided such consideration in the Petition.” The Board, however, determined that “the Final Written Decision provided such considerations.” In addition, the Board concluded that it “could not have overlooked or misapprehended arguments not made until the request for rehearing.”

Accordingly, the Board denied Patent Owner’s request for rehearing.

Apple, Inc. v. Personal Web Technologies, LLC, IPR2013-00596

Paper 35: Decision on Request for Rehearing

Dated: August 3, 2015

Patent: 7,802,310 B2

Before: Kevin F. Turner, Joni Y. Chang, and Michael R. Zecher Written by: Turner