Takeaway: The sections of a petition cited in support of a contention that a reference teaches a limitation of a challenged claim must be sufficiently specific, and must be directed to the limitation in question, rather than to other limitations.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying inter partes review of claims 1-36 of the ’278 patent.  The denied challenges for which rehearing was requested were challenges to claims 1-36 under 35 U.S.C. § 102 in view of Peng; to claims 1-7, 9-11, 13-25, 27-29, and 31-36 under 35 U.S.C. § 102 in view of Waters; to claims 1-36 under 35 U.S.C. § 102 in view of Parke; and to claims 1-36 under 35 U.S.C. § 103 in view of Peng and Waters.

The Board’s decision to deny institution based on Peng was based on Petitioner’s failure to show that Peng discloses “obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” – which the Board referred to as “limitation 1(a)” – as required by independent claims 1 and 19.  In its Request for Rehearing, Petitioner cited page 52 of Peng and for the first time alleged that “[i]n Peng, the ‘synthetic image frames’ (that become the key-frames) are morph weight set streams.”  In support of its position that the comments on Peng in its Request for Rehearing do not constitute new argument, Petitioner cited pages 11-12 and 21-22 of the Petition.  The Board, in disagreement, was of the position that pages 11-12 of the Petition only generally discuss information relating limitation 1(a), in a manner that was not sufficiently specific, and that pages 21-22 of the Petition “are portions of the claim chart directed to further claim limitations, not limitation 1(a).”  Thus, the Board concluded that because Petitioner’s contentions based on Peng were not raised in the Petition, the Board could not have overlooked or misapprehended them.

The Board reached a similar conclusion with respect to the challenge based on Waters.  In this regard, the Board had denied inter partes review based on Waters because Petitioner had failed to adequately prove that Waters disclosed the “morph weight set stream” aspect of limitation 1(a).  Petitioner disputed this position in its Request for Rehearing, and in support of this position cited pages 13-14, 20, and 22 of the Petition to show that a new argument was not being made.  As with Peng, the Board found that the portions of Waters cited in the Request for Rehearing either did not discuss the limitation specifically enough, or related to limitations other than disputed limitation 1(a).  Likewise, the Board conducted this type of analysis, and reached basically the same conclusion, with the challenge based on Parke.

Regarding the obviousness challenge to claims 1-36 under 35 U.S.C. § 103 in view of Peng and Waters, the Board found that Petitioner had not sufficiently alleged in the Request for Rehearing that the Board had abused its discretion in denying inter partesreview.  Instead, Petitioner’s Request for Rehearing merely stated that “Petitioner respectfully requests that the Board reconsider its decision, and authorize IPR with respect to the patentability challenge . . .of claims 1-36 based on a combination of Peng and Waters” and then went on to repeat the challenge presented in the Petition.

Naughty Dog, Inc. v. McRO, Inc., IPR2014-00197 
Paper 15: Decision Denying Petitioner’s Request for Rehearing 
Dated: July 14, 2014 
Patent: 6,611,278 B2 
Before: Brian J. McNamara, Richard E. Rice, and Jeremy M. Plenzler 
Written by: Plenzler