Takeaway: Claim interpretation in an infringement context in district court may be different from the broadest reasonable interpretation applied in an inter partes review.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision to institute inter partes review of claims 1, 5, 6, and 10 of the ‘113 patent on two asserted grounds and denying institution of one asserted ground.

The Board reviews decisions on institution for an abuse of discretion, and a request for rehearing must “identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Petitioner asserted that the Board adopted inconsistent positions regarding the phrase “secured to a [first/second] side of the enclosure,” and that the Board overlooked Exhibits 1008 and 1009 in its claim construction.

Regarding the “secured to” phrase, Petitioner had argued for a narrow construction requiring direct contact while Patent Owner argued that the phrase should be given its plain and ordinary meaning. The Board indicated that it had considered Petitioner’s arguments but found that Petitioner did not establish that the patent applicant had “disavowed or limited any scope of the phrase ‘secured to.’”  Instead, the Board found that no further construction was necessary.  In its Request, Petitioner argued that the Board’s Decision was inconsistent because the term “either requires ‘direct contact’ or allows ‘spacing’ between first and second plates.”  The Board disagreed, finding that the broadest reasonable interpretation “requires only that the plates are secured to the enclosure.”  Therefore, the Board was not persuaded that there was any inconsistency.

Petitioner also argued that the Board should have relied upon the Facebook, Inc. v. Pragmatus AV, LLC, 2014 WL 4454956 (Fed. Cir. 2014) decision rather than the In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) because the Facebook decision was “more on point.”  However, the Board was not persuaded that it abused its discretion, or overlooked or misapprehended anything because the Facebook decision is not precedential.

With respect to Exhibits 1008 and 1009, Petitioner cited these exhibits in the Petition as alleged evidence of Patent Owner’s claim construction position. The Board found that Exhibit 1008, which is a letter from Patent Owner’s counsel alleging infringement, does not establish Patent Owner’s construction.  In this regard, the Board also noted that “claim interpretation in an infringement context in district court may be different from the broadest reasonable interpretation applied in an inter partes review.”

The Board was also not persuaded that Exhibit 1009 contains Patent Owner’s claim interpretation. Exhibit 1009 is a product brochure of one of Petitioner’s products.  The Board was not persuaded that Petitioner’s characterization of the brochure provided evidence of Patent Owner’s interpretation in the instant proceeding.

Finally, the Board was not persuaded by Petitioner’s re-arguing points in the Petition that were previously considered. In particular, the Board found unpersuasive the argument regarding the lack of evidence establishing that a person of ordinary skill in the art “would not make the proposed modifications” because Petitioner bears the burden of establishing a reasonable likelihood of unpatentability.  Any new arguments or evidence not previously presented were also not considered by the Board.

Billy Goat Industries, Inc. v. Schiller Grounds Care, Inc., IPR2014-00742
Paper 14: Decision on Request for Rehearing
Dated: December 18, 2014
Patent: 8,469,113 B2
Before: Barry L. Grossman, Mitchell G. Weatherly, and James A. Tartal
Written by: Grossman