Takeaway: The Board found that a disclaimer of dependent claims for the alleged purpose of avoiding CBM review was not an issue for consideration by an expanded panel in view of other deficiencies noted by the Board in the Petition.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision not to institute covered business method review of claims 1-4, 6-11, 13-21, 24, 27-35, 37, 38, 42, 43, 47-49, 54, 55, 62, and 63 of the ‘279 patent. Petitioner had not shown an abuse of discretion in the Decision, according to the Board, thus Petitioner had not carried its burden of demonstrating that the Board had misapprehended or overlooked any matters argued in the Petition.

Petitioner had asserted that the Board had abused its discretion by “concluding that the information presented in the Petition . . . did not establish that the ‘279 patent qualifies as a ‘covered business method patent[.]’” Petitioner had essentially presented five arguments in support of this assertion.

A first argument by Petitioner was that the Board had “misapprehended the effect of Patent Owner’s statutory disclaimer of dependent claim 24 on parent independent claim 1” and, in particular, the Board had not given appropriate consideration to the disclaimed claim 24 for claim differentiation analysis purposes. The Board disagreed, finding that “the basic deficiency in the Petition was that Petitioner provided no analysis of the language of claim 1 or explanation as to why the particular language of claim 1 meets the standard for covered business method patent eligibility.”

A second argument by Petitioner was that “Patent Owner engaged in gamesmanship by statutorily disclaiming dependent claim 24, and should not be rewarded for ‘[a]fter-the-fact claim manipulation techniques.’” However, the Board was not persuaded by this position.

A third argument by Petitioner was that the Board had overlooked or misapprehended several evidentiary citations set forth in the Petition. The Board’s reply was that it had “reviewed all of Petitioner’s contentions regarding the Specification and found them unpersuasive, particularly in view of the context-neutral nature of the ‘data’ recited in claim 1.”

A fourth argument by Petitioner was that that the Board’s “determination regarding the context-neutral ‘data’ recited in claim 1 is inconsistent with four other decisions of the Board.”  But the Board replied that it “could not have misapprehended or overlooked any argument based on these decisions, however, as they were not cited in the Petition.”

A fifth argument by Petitioner was “that ‘[a]s a matter of first impression, this disclaimer of dependent claims to avoid CBM review warrants expanded panel review.’” The Board disagreed, noting that “[a] panel does not have authority to expand a panel;” that “only the Chief Judge, acting on behalf of the Director, may act to expand a panel[,]” and that in the instant proceeding, “the suggestion to expand the panel [had] been considered, but [was] not adopted.”

Google Inc. v. SimpleAir, Inc., CBM2015-00019
Paper 15: Decision on Petitioner’s Request for Rehearing
Dated: August 19, 2015
Patent: 8,572,279 B2
Before: James P. Calve, Justin T. Arbes, and Tina E. Hulse
Written by: Arbes