Takeaway: It is petitioner’s burden to establish in the petition that a prior art reference constitutes prior art, and when relying upon an earlier priority date, the petition must establish that the prior art patent is entitled to the benefit of that earlier date.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of two asserted grounds of unpatentability. The Board had denied institution of the asserted grounds based upon the Jeffers and Campbell references because Petitioner failed to demonstrate that the references were prior art to the claims of the ’749 patent.

The Board reviews decisions on institution for an abuse of discretion, and the “party challenging a decision bears the burden of showing the decision should be modified.”

In its Request, Petitioner challenged the Board’s finding that Campbell is not prior art, and requested that the Board institute the challenge based upon Campbell. Petitioner argued that Campbell should be “entitled to a priority date of March 31, 1980 by virtue of its priority claim to an earlier-filed U.S. application.” Specifically, “Campbell issued on August 20, 1985 and claims priority to two earlier-filed U.S. applications: (1) a parent application filed on November 27, 1981; and (2) a grandparent application filed on March 31, 1980 (‘the 1980 grandparent application’).” The parent application was a continuation-in-part application of the 1980 grandparent application. Petitioner’s position was that Campbell was entitled to the filing date of the 1980 grandparent application as of its § 102(e) date.

In addition, Petitioner argued that it had no reason to believe that Campbell’s status as prior art under § 102(e) was in dispute based upon Patent Owner’s comments in the prosecution history. In its Rehearing Request, Petitioner argued that the portions of Campbell that were relied upon in the Petition were disclosed in the 1980 grandparent application and that the CIP parent application added “relatively little” to the disclosure of the 1980 grandparent.

The Board was not persuaded. 35 U.S.C. § 120 requires that “(1) the written description of the earlier filed application provides support for the claim as of its earlier filing date, as required under 35 U.S.C. § 112; and (2) the later application ‘contains or is amended to contain a specific reference to the earlier filed application.’” Furthermore, “if any application in the priority chain fails to make the requisite disclosure of subject matter [under § 112], the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain.”

It is Petitioner’s burden to demonstrate a reasonable likelihood of prevailing on a ground of unpatentability. To establish that a reference is entitled to an earlier filing date, a petitioner must “identify, specifically, the disclosure in ancestral applications ‘that do not share the same disclosure,’ and which allegedly show § 112 support for the relied upon priority date.” Petitioner did not demonstrate in the Petition that there was no break in Campbell’s priority chain and could not remedy this deficiency in its Request for Rehearing. The Board could not have overlooked or misapprehended such arguments and evidence not presented in the Petition. Thus, Petitioner’s Request for Rehearing was denied.

Amazon.Com, Inc. v. Personalized Media Communications, LLC, IPR2014-01533
Paper 16: Decision on Petitioner’s Request for Rehearing
Dated: April 20, 2015
Patent: 7,805,749
Before: Karl D. Easthom, Trenton A. Ward, and Georgianna W. Braden
Written by: Braden