Takeaway:  A request for rehearing of a denial of institution is denied where the Board did not overlook or misapprehend any relevant matters in making its decision.

In its Decision, the Board denied Petitioner’s request for rehearing of its denial of institution of inter partes review of the ’521 patent. Petitioner had argued that the Decision failed to apply broadest reasonable construction and misapprehended or overlooked several matters in the Petition. The Board was not persuaded by any of the arguments.

Regarding claim construction, Petitioner argued that the term “desired glass coloring oxide agent levels” was construed too narrowly in the Decision. Specifically, Petitioner argued that the Board’s construction required that “oxide agent” be “only ‘oxide’” or “pure oxides.” The Board disagreed, stating that its construction did not include this requirement. The Board also clarified that its Decision did not rest on a finding that Calumite slag is not an “oxide agent,” as argued by Petitioner. Instead, the Decision was based on the “concrete example” provided by Petitioner’s expert not being supported by the prior art reference, Nix, because the “coloring oxide agent” identified by the expert is not disclosed by Nix as having a redox factor of -0.092, as set forth in the “concrete example” provided by the expert.

Petitioner also argued that, with respect to step (f) of the claims, the Decision overlooked or misapprehends (1) that the starting materials disclosed in Table 2 of Nix are used for comparison purposes and (2) as necessary inputs for calculating the percentage of glass color oxide agent levels. The Board noted that Petitioner failed to identify any error in its determinations that the “concrete example” set forth by the expert is not disclosed in Nix, and thus the arguments by Petitioner are not relevant.

With regard to the obviousness ground of unpatentability, Petitioner argued that the Decision misapprehended or overlook the stated basis for combining the teachings of Faber and Nix, including Faber’s citation to Nix. However, the Board noted that the Decision expressly acknowledged Faber’s reference to Nix and the reason to combine discussed in the Petition and the expert declaration. Accordingly, in its Decision, the Board assumed that a person of ordinary skill in the art would have combined the teachings of Faber and Nix, but determined that the Petition did not explain sufficiently how the combination would have led to the claimed method. Specifically, the Board had found that Petitioner had not shown sufficiently how the teachings would have led one of ordinary skill in the art to the step of “calculating . . . the desired glass coloring oxide agent levels,” as recited in step (f) of the claims.

Petitioner also asserted that certain disclosures in Faber were disregarded solely on the grounds that they were not cited or discussed by the expert. The Board disagreed and clarified that the Decision stated that the Petition failed “to explain how the quoted disclosures from Feber, alone or in combination with Nix, teach or suggest step (g) of the challenged claims.” Thus, the Decision did not disregard certain disclosures in Faber, but instead found that the Petition had not explained sufficiently how the cited disclosures, alone or in combination with Nix, teach or suggest the calculating step in paragraph (g) of the independent claims.

Ardagh Glass Inc. v. Culchrome, LLC, IPR2015-00943
Paper 13: Decision Denying Request for Rehearing of Denial of Institution of Inter Partes Review
Dated: January 5, 2016
Patent: 6,230,521 B1
Before: Grace Karaffa Obermann, Christopher L. Crumbley, and Elizabeth M. Roesel
Written by: Roesel