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Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper No. 19, Patent No. 8,437,293

[When additional information can be submitted with a request for rehearing]

FACTS

Huawei filed a request for rehearing after its petition for the institution of an IPR was denied. Huawei argues that the PTAB overlooked evidence suggesting that the proper construction of “scheduling request” is not constrained only to single bit messages. Also, Huawei argues that PTAB overlooks portions of Huawei’s petition that explains how prior art teaches an invention where “second SR” is a single bit message.

HOLDING

The request for rehearing is denied.

Exhibits 1039-41 are expunged from the record. Huawei submitted additional exhibits with its request for rehearing. In this situation, evidence will not be admitted without good cause. Huawei never requested a conference call to show good cause, nor showed good cause in their petition, so the exhibits will not be admitted.

The PTAB did not overlook certain evidence regarding the claim construction of “scheduling request.” Huawei argues that under the broadest reasonable interpretation (BRI) standard used by the USPTO, “scheduling request” (SR) should be construed to include multiple bit messages. While the embodiments sometimes neglect to specify whether they exclude several bit messages, the specification of the invention says that the embodiments “overcome the problem” without increasing the SR to several bits. Second, Huawei argues that the plain and ordinary meaning of “scheduling request” can possibly cover a several bit message. This is incorrect, because the claims need to be construed to be consistent with the specification and the specification makes it clear that it solves the problem in the prior art without resorting to multiple bit messages. Third, Huawei says that Patent Owner argued for a different claim construction in a district court proceeding, but this argument was not raised before now, so it will not be considered.

The PTAB also did not overlook the portions of the petition explaining how prior art teaches an invention where a “second SR” is a single bit message. This argument was not presented in the portion of the petition addressing the “second SR,” so it will not be considered.

TAKEAWAY

Evidence will not be admitted with a request for rehearing without good cause. The claim construction given by the broadest reasonable interpretation method must be consistent with the specification. Arguments raised in a request for rehearing must have been raised before, or the petitioner must seek permission to file an additional briefing.

A copy of the actual decision can be found here.