Circuit BoardIn a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim.  That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163.  Decision on Institution (Paper 18, “Orig. Dec.”); Request for Rehearing (Paper 20, “Req. Reh’g”); Decision on Request for Rehearing (Paper 22, “Dec.”).  A search of Docket Navigator reveals that fewer than one in five such requests for rehearing are granted.  In this proceeding, originally, the Board declined to institute an inter partes review of one of the claims (claim 12) of U.S. Patent No. 7,296,121, though the Board instituted review for other claims.  Petitioner requested rehearing on the basis that the Board misapprehended the Petition’s application of a prior art publication to claim 12.

When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).  The burden of showing a decision should be modified lies with the party challenging the decision, and the party must specifically identify all matters that it believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d).

Petitioner’s request for rehearing focused on the application of prior art as an anticipatory reference under section 102.  Specifically, Petitioner argued that the original decision misapprehended its arguments regarding claim 12.  In the rehearing request, Petitioner identified with particularity how it believed the Board misapprehended the argument, and included references to the original petition for support.

For context, as explained by the Board in the Original Decision, the ‘121 patent relates to accessing data in computer systems that include more than one processor.  Orig. Dec. 3.  The system disclosed in the ‘121 patent includes a probe filtering unit, and a probe is defined as a mechanism for eliciting a response from a node to maintain cache coherency in a system.  Orig. Dec. 3.  The probe filtering unit may also accumulate responses from those nodes selected to receive the probes and respond to the node from which the probe originated. Orig. Dec. 5.

In the original decision, the Board had concluded that Petitioner had not shown sufficiently that the prior art disclosed “wherein each of the processing nodes is programmed to complete a memory transaction after receiving a first number of responses to a first probe” “and the first number is one” as recited in claim 12¹.

The Board had read Petitioner’s argument as stating that the prior art inherently disclosed completing a memory transaction after receiving one response in all situations.  Dec. 3.  The Board in its original decision stated that such scenario was not inherently disclosed because it was “not necessarily the case” and the system could receive “one, two, or three responses.” Orig. Dec. 23.  However, as the Petitioner clarified in its request for rehearing, its argument was not based on inherency, it was instead based on a specific example disclosed in the prior art.  Dec. 3-4.  Petitioner argued that the prior art disclosed “where a requesting microprocessor received one and only one response from the other microprocessors and, therefore, in this example, necessarily completed its memory transaction after receiving one and only one response.”  Req. Reh’g 1, 5 (emphasis added).  Accordingly, Petitioner was arguing that the example itself explicitly disclosed the scenario described in claim 12, not that it was inherently disclosed.

Petitioner further argued that the Board’s focus was misguided when it focused on whether the prior art system also supported memory transactions that may involve multiple responses.  Req. Reh’g 6.  Petitioner clarified in its request that whether the prior art system supports multiple responses is not relevant to the language of claim 12.  Dec. 4.  The Board then agreed that scenarios involving more than one response are not relevant to Petitioner’s argument. Dec. 4.

After the Board reviewed the request for rehearing and agreed that it had misapprehended the significance of Petitioner’s arguments, the Board then addressed the Patent Owner’s argument in its preliminary response with respect to claim 12.  The Patent Owner did not file an opposition to the rehearing request, and the record of the proceedings does not make clear whether the Patent Owner requested authorization to file an opposition that was denied by the Board or whether the Patent Owner did not seek such authorization.  Regardless, the Board refers only to the Patent Owner’s preliminary response arguments, and the Board was not persuaded by such arguments.  Instead, the Board credited the testimony of the Petitioner’s expert regarding the scope of the prior art.

Accordingly, the Board granted the Petitioner’s request for rehearing and was persuaded that the Petitioner established a reasonable likelihood of prevailing in its challenge that claim 12 was anticipated by the prior art, and changed its institution decision to include claim 12.


¹The full language of Claim 12, and Claim 11 from which it depends, with emphasis added, is:

  1. The computer system of claim 1 wherein each of the processing nodes is programmed to complete a memory transaction after receiving a first number of responses to a first probe, the first number being fewer than the number of processing nodes.
  2. The computer system of claim 11 wherein the probe filtering unit has temporary storage associated therewith for holding read response data from one of the cache memories, and the first number is one.