Takeaway: If the challenged patent claims include means-plus-function limitations, the petition must identify sufficient structure corresponding to those limitations that is supported by evidence from the specification or prosecution history of the patent.

In its Decision, the Board denied Petitioner’s request for rehearing on its denial of institution. The Board’s Decision on Institution denied inter partes review of all of the challenged claims (claims 1-20) of the ’435 Patent based on Petitioner’s failure to identify sufficient structure corresponding to certain means-plus-function limitations. Petitioner argued that the Board overlooked or misapprehended the points presented in the Petition regarding the sufficiency of the means-plus-function limitations.

The Board began by stating that the Board reviews a request for rehearing a decision on a petition for an abuse of discretion, which occurs when the decision was based on an erroneous conclusion of law, a clearly erroneous finding of fact, or clear error of judgment. The dissatisfied party must identify the place in the record where it previously addressed each matter it has submitted for review.

The Board denied institution based upon the Petitioner’s failure to direct the Board to any portion of the specification or prosecution history sufficient to link the structure to the function of “reviewing the loan application data to determine completeness” or “completing the loan application whenever loan application data is incomplete by contacting the loan originator.” The Board found that the Broker/Lender appears to be the person performing the “reviewing” and “completing” functions rather than a structure.  Petitioner agreed that if the Broker/Lender performs such functions, that the challenged claims would lack corresponding structure, as required by 35 U.S.C. § 112, ¶ 6. The Board noted that the Petition did not include any explanation as to why the “Broker/Lender” is anything more than a person performing the reviewing and completing functions. Petitioner only stated that the term “Broker/Lender” includes any entity, which could be a person or a thing, but that because the ’435 Patent is directed to a data processing system, one of ordinary skill in the art would understand that the entity that performs the functions is part of a data processing system. However, Petitioner did not cite any evidence for this contention and could not identify anything in the specification that supports its position. Petitioner acknowledged that there is not a statement in the ’435 Patent that expressly describes that the algorithm is implemented by a computer system.

Askeladden LLC v. iSourceLoans LLC, IPR2015-00134
Paper 11: Decision Denying Petitioner’s Request for Rehearing
Dated: May 22, 2015
Patent 7,340,435 B2
Before: Richard E. Rice, Scott A. Daniels, and Jeremy M. Plenzler
Written by: Plenzler