Takeaway: Evidence to support an inherency-based anticipation ground of unpatentability must establish that a limitation is necessarily present in a prior art reference, not merely that the limitation is desirable in light of the reference’s disclosure.

In its Decision, the Board denied Petitioner’s request for rehearing of the Board’s denial of institution of an inter partes review of claim 30 of the ‘132 patent. The Board concluded that it had not misapprehended or overlooked the teachings of Johnson, the alleged anticipatory reference.

The Board stated that it reviews Decisions on Institution for an abuse of discretion, which is only indicated “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” The request must identify all matters the Board allegedly misapprehended or overlooked.

The Board noted that it denied institution because Petitioner failed to show that Johnson explicitly or inherently disclosed “the step of deactivating the selected wordline in the first subarray prior to said step of activating the selected wordline in the second subarray.” Instead, the Board had “concluded that Petitioner’s contentions were directed to how Johnson’s memory device could have been used, rather than how it necessarily would have been used and, thus, did not evidence inherent anticipation.”

Petitioner argued that the Board misapprehended the teachings of Johnson. In particular, Petitioner argued that based upon the type of memory in Johnson, there would have been a need for the word line to be deactivated “promptly” – as soon as data was written into an amplifier – after which activation of the wordline for the second subarray would have occurred.  The Board was not persuaded.  Considering Petitioner’s arguments, the Board still held that it was not shown that “it would have been necessary to deactivate the wordline of the first subarray prior to activating the wordline of the second subarray.”  Instead, Petitioner had only shown that the deactivation would have been desirable, which was not sufficient to support an inherent anticipation ground.

Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00317
Paper 16: Decision on Request for Rehearing
Dated: July 14, 2014
Patent: 5,687,132
Before: Kevin F. Turner, Trevor M. Jefferson, and David C. McKone
Written by: McKone