Takeaway:  Where challenged claims are analyzed together in a petition, those claims may not later be argued separately in a Request for Rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s denial of institution of inter partes review. Petitioner’s requested partial reconsideration on the following grounds: “(1) in denying trial as to claim 7, the Board relied on limitations not recited in the claim; (2) the Board improperly limited claim 7 to a particular embodiment; (3) the Board’s ‘implicit’ construction of the term ‘management data’ is improper; and (4) the Board improperly limited independent claim 4.”

The moving party has the burden to show a decision should be modified and “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, an opposition, or a reply.”

Regarding Petitioner’s first argument concerning claim 7, the Board explained that “Petitioner’s anticipation challenge based on Bavadekar discusses claims 4 and 7 together,” and therefore, the Board analyzed claims 4 and 7 together. Petitioner alleged this to be error, but the Board was not persuaded. In particular, Petitioner’s Rehearing Request discussed a limitation found in claim 1, not claims 4 and 7. Moreover, Petitioner argued that a section heading in the Petition indicated a difference between claims 4 and 7, but the Board found that the analysis following the heading did not distinguish between the claims.

As to the argument regarding improperly limiting claim 7 to a particular embodiment, the Board noted that it relied upon specific claim language in denying institution rather than importing limitations from the specification. Petitioner’s argument, according to the Board, amounted to “a disagreement with the Board’s findings regarding Bavadekar, and is not persuasive that anything was overlooked or misapprehended by the Board.”

Regarding the Board’s alleged “implicit” construction of “management data,” Petitioner asserted that the construction was not supported by “substantial evidence.” The Board noted that Petitioner had not proposed a construction for “management data.” Thus, the Board found the argument amounted to “a disagreement with the Board’s conclusion, and is not persuasive that anything was overlooked or misapprehended.”

Finally, Petitioner argued that claim 4 was improperly limited, tracking “arguments pertaining to claim 7.” Thus, the Board denied the request for the same reasons discussed with respect to claim 7.

The Board found that Petitioner had not carried its burden and denied the request for rehearing.

Symantec Corp. v. Finjan, Inc., IPR2015-01545
Paper 12: Decision Denying Request for Rehearing
Dated: February 25, 2016
Patent: 7,756,996
Before: Thomas L. Giannetti, Richard E. Rice, and Miriam L. Quinn
Written by: Giannetti