Takeaway: If a petitioner can identify in its petition arguments that the Board misapprehended, then the Board may grant rehearing as to those arguments.  

In its Decision, the Board granted a request for rehearing on the decision on institution, and instituted review of claims 8-10 of the ’640 Patent.

In its Petition, Petitioner relied on Ejzak’s “local policy” as the “bypass mode data” of claim 8. In its Decision, the Board questioned where “local policy” that may apply generally to all media gateways indicates a specific bypass setting for a particular ALG, BG, or media gateway.  Therefore, the Board concluded that Petitioner failed to provide an adequate explanation on how “local policy” satisfies the bypass mode data requirement of claim 8.

During its request for rehearing, Petitioner identified points that the Board misapprehended in its Decision. The Board found that the Petition adequately explained the “local policy” is specific to the local ALG, and supported this explanation with expert testimony.  The Board rejected Patent Owner’s arguments otherwise.  Therefore, the Board instituted trial as to claims 8-10 as obvious over Ejzak and Intel, and as obvious over Ejzak and Cisco.

Genband US LLC and Genband Management Services Corp. v. Metaswitch Networks Ltd., IPR2015-01457
Paper 17: Decision on Request for Rehearing
Dated: February 22, 2016
Patent 8,687,640 B2
Before: Jameson Lee, Josiah C. Cocks, and Robert L. Kinder
Written by: Lee