Takeaway: In requesting the Board to correct a drafting error within a claim, the burden is on Petitioner to show that the claim contains the type of error that is considered a drafting error under 37 C.F.R. § 42.20(c).

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution. That Decision had instituted inter partes review of claims 4, 8, and 9 (but not claim 1) of the ‘843 patent.

In its Request, Petitioner had asserted that the Board had abused its discretion by misapprehending “its power to correct an obvious drafting error in Claim 1” and by failing “to apply the broadest reasonable construction in light of the specification.” Petitioner had also asserted that “if its proposed claim construction for claim 1 is adopted, the Board should reconsider and institute review of claim 1 based on the applied prior art.” Moreover, Petitioner had asserted that the Board had misapprehended certain sections of Miyai as asserted in the Petition. The Board found that it had not abused its discretion with respect to any of these.

In this regard, Petitioner had argued that claim 1 should be interpreted as if it was reciting “applying data impulses to the liquid crystal device of the pixel via the data line; not the scan line” (emphasis in original). But the Board found that other than pointing to a single citation in the specification, Petitioner had not made any other argument as to why the Board should rewrite the claim. The Board also noted that Petitioner had not provided any expert declaration explaining why claim 1, as originally written, was in error. Thus, the Board concluded that “Petitioner did not meet its burden to show sufficiently that claim 1 contains a drafting error,” which in turn led to the Board refusing to “adopt Petitioner’s proposed construction to correct claim 1 as though it contains a drafting error.”

As for Petitioner’s argument that the Board had “incorrectly concluded that Miyai does not disclose a plurality of scan lines, a plurality of data lines, and a plurality of pixels as required by independent claim 4[,]” the Board’s position was that the arguments and explanations in the Request for Rehearing were not presented in the Petition. Thus, the Board could not have overlooked or misapprehended them. The Board went on to note that the new arguments by Petitioner in the Request for Rehearing, namely – “that a person of ordinary skill in the art would have understood Miyai to disclose a plurality of data lines, a plurality of scan lines, and a plurality of pixels” – were merely attorney arguments that could not “take the place of evidence lacking in the record.”

Sharp Corporation, Sharp Electronics Corporation, and Sharp Electronics Manufacturing Company of America v. Surpass Tech Innovation LLC, IPR2015-00021
Paper 18: Decision Denying Request for Rehearing
Dated: April 27, 2015
Patent: 7,202,843 B2
Before: Sally C. Medley, Bryan F. Moore, and Beth Z. Shaw
Written by: Medley