Takeaway: A party may be granted authorization to file an opposition to a request for rehearing of a decision on institution.

In its Decision, the Board denied the Request for Rehearing of the Decision instituting trial only as to claim 18. Petitioner requested rehearing of the Decision not to review claims 1-17 and 19 of the ’970 Patent. Petitioner contended that the Board, in deciding not to review claims 1-17 and 19, misapprehended or overlooked that the primary reference relied upon in the Petition taught certain elements of the claims that the Board did not believe were taught by the prior art. Petitioner also contended that the Board misapprehended or overlooked that method claims 14, 16, and 19 did not recite any particular structure for fulfilling one of the claimed features. Patent Owner filed, following authorization from the Board, an Opposition to Petitioner’s Request for Rehearing.

The Board agreed with Patent Owner that the Petition did not specifically explain how every claimed feature was taught by the prior art, and that Petitioner’s newly presented assertions were not supported by the reference relied upon by Petitioner.

Petitioner also asserted that the method claims were untethered to any specific structure, and that the Board had erroneously assumed that the wireless station in the primary reference must include the functionality of certain wireless location applications. The Board was not persuaded by these arguments, and maintained its denial of review of claims 1-17 and 19.

Wavemarket Inc. d/b/a Location Labs v. Locationet Systems Ltd., IPR2014-00199
Paper 24: Denying Request for Rehearing of the Decision on Institution
Dated: June 11, 2014
Patent 6,771,970 B1
Before: Kristen L. Droesch, Glenn J. Perry, and Sheridan K. Snedden
Written by: Droesch