Takeaway: A petitioner may not (1) rely on newly-presented argument in a request for rehearing of a denial of institution even where the argument was previously presented in a different context in the petition; and (2) combine various disclosures from different embodiments of a reference without offering some justification for their combination.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying inter partes review. Specifically, Petitioner Marvell Semiconductor challenged the Board’s “conclusion that the Petition failed to demonstrate that two limitations of independent claims 7 and 19 of the ’944 patent (the only independent claims challenged) are missing from the main prior art reference [Sherman].” This was the second attempt by Petitioner Marvell to institute inter partes review of the ’944 patent. See Case IPR2014-00547.

The standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in part:

A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.

The ’944 patent is directed to systems and methods for reducing the likelihood of collisions between data packets in wireless communications channels. The Petition was denied for failing to demonstrate that a (1) “transmitter” limitation; and a (2) “duration value” limitation were met by Sherman.

As for the “transmitter” limitation, Petitioner relied on two lines of a Sherman provisional application that was argued to be incorporated by reference into Sherman. The Board was not persuaded that reference in the Sherman provisional to “all stations” means “all stations other than the CTS-sending station.” First, the Board considered “this a newly-presented argument and therefore could not have been overlooked or misapprehended in the Decision.” The Board conceded that the two lines from the provisional were cited in the Petition, however, “the purpose of the citation was to establish that Sherman met the claim requirement for a self-addressed CTS frame,” not the “transmitter” limitation at issue. Second, the two-line statement from the provisional appears in a description of a different embodiment than that which is pertinent to the challenged claims, and Petitioner does not explain how this embodiment would be pertinent to the claimed invention, which is directed to different protocols sharing a communications medium.” Moreover, “Petitioner does not explain how these two embodiments, which the Sherman provisional treats separately, should be combined, or whether it would be proper to combine them.” See, e.g., Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”). Petitioner thus “failed to demonstrate that the Board abused its discretion in denying the Petition on this ground.”

As for the “duration value” limitation, Petitioner again relied on “several lines of the Sherman provisional that it contends were overlooked or misapprehended.” The Board was not persuaded, finding that, rather than demonstrating that the duration value limitation is met by Sherman, “Petitioner has combined various disclosures in the Sherman provisional, picking and choosing features from each, an approach that is prohibited.” Net MoneyIN, Inc., 545 F.3d at 1371. Thus, Petitioner’s Request for Rehearing was denied.

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-01562
Paper 13: Decision on Request for Rehearing
Dated: June 8, 2015
Patent: 6,977,944 B2
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Giannetti