Takeaway: A request for rehearing may not include new arguments but should only include arguments that were previously presented and were either overlooked or misapprehended by the Board.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding claims 1-8 and 10-12 of the ‘492 patent unpatentable. Patent Owner asserted in its Request that, among others: the Board’s claim construction and analysis of the prior art were incorrect; that the proceedings are unconstitutional, and that counsel for Petitioner and its expert fraudulently misled the PTAB.

Regarding the issue of claim construction, the Board noted that Patent Owner’s proposed constructions would have improperly imported large portions of the specification into the claims. The Board found that adopting Patent Owner’s proposed constructions would result in several claim limitations having little if any distinction despite those limitations being recited as separate claim elements.  The Board also noted that the Request for Rehearing repeats the same assertions that were made in the Patent Owner Response.  The Board found that it did not overlook or misapprehend the arguments, and instead, the Final Written Decision explained why the Board did not adopt Patent Owner’s proposed constructions.  The Board also rejected other claim construction arguments as not having been previously presented, finding that it could not have possibly overlooked or misapprehended those issues.

With respect to Patent Owner’s arguments regarding the prior art, the Board disagreed with Patent Owner’s interpretation of what the prior art disclosed. Many of the arguments presented in the Request for Rehearing had already been presented in the Patent Owner Response and rejected by the Board.  Therefore, Patent Owner did not demonstrate that any matter had been overlooked or misapprehended.

Furthermore, the Board noted that several arguments that were presented in the Request were accorded no weight because they could not be analyzed by the Board. In particular, Patent Owner alleged that the Board’s decision included “obscenely technically incorrect statements” and that the Board’s “jumping to obscenely incorrect conclusions is both brash and pathetic for innovation in USA, unduly killing valid patents of very good inventions that have benefitted the industry at large monumentally.”  The Board found these comments were not arguments subject to analysis.

Patent Owner next argued that the Board abused its discretion and denied Patent Owner due process with respect to its attempt to disqualify the Chelliah reference as prior art. However, the Board found that Patent Owner did not identify what arguments were ignored by the Board, how it abused its discretion, or how Patent Owner was denied due process.  In particular, the Board noted that Patent Owner attempted to antedate the Chelliah reference by offering a declaration from the inventor of the challenged patent, who was also the CEO of Patent Owner (and the current patent owner).  As set forth in the Final Written Decision, the declaration was not corroborated, and Patent Owner failed to identify any corroboration in its Request that the Board may have overlooked or misapprehended.

Patent Owner also argued it was denied due process by the Board’s denial of the motion to amend even though all requirements were allegedly met. However, the Board indicated that the Request failed to address the lack of written description support for the amended claims, which was an important basis for the denial of the motion.  Therefore, Patent Owner failed to demonstrate that the board overlooked or misapprehended anything in its denial of the Motion to Amend.

Turning to the constitutionality of the proceeding, the Board noted that Patent Owner provided “no legal analysis or context to support this assertion.” In addition, this argument was never previously raised and could not have been misapprehended or overlooked.

Next, “Patent Owner accuses everyone involved in this proceeding, except herself, of some type of fraud, misconduct or incompetence.” First, Patent Owner’s allegations with respect to Petitioner’s counsel merely involved Petitioner’s disagreement with respect to Patent Owner’s claim construction assertions.  No evidence or support was provided, and the Request was the first time the allegations were made.  Second, Patent Owner alleged the judges and “their bosses” had undisclosed financial interests.  However, these allegations were not supported.  Patent Owner’s similar arguments regarding the bias of the judges were found to be baseless.

Finally, Patent Owner stated that it was entitled to a refund of money spent in the proceeding, totaling on “the order of several million dollars.” The Board found that a Request for Rehearing was not an appropriate vehicle for such demands.

SAP America, Inc. v. Lakshmi Arunachalam, IPR2013-00194
Paper 69: Decision Denying Patent Owner’s Request for Rehearing of Final Written Decision
Dated: November 21, 2014
Patent: 8,108,492 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara
Related Proceedings: IPR2014-00194; IPR2014-00195; CBM2013-00013