In Jiawei Technology (HK) Ltd. v. Simon N. Richmond, the PTAB denied Petitioner’s Request for Rehearing of a decision not to institute an IPR. IPR2014-00937, Paper 24 (Feb. 6, 2015). Maintaining its decision that the Petitioner failed to properly address a claim limitation that was “critical” to understanding claim scope, the Board held no abuse of discretion was shown.
The challenged claims recite a lighting device that produces light of varying color. Rejecting Petitioner’s argument that the Board failed to analyze an “express definition” of the claim limitation “color changing cycle” provided in the Petition, the Board explained the Petitioner had only cited to a “mere repetition of the claim language” and claim charts that do not “explain how the claim terms read on the prior art.” Likewise, the Board characterized Petitioner’s purported construction of “color changing cycle” as merely repeating claim language.
Though recognizing that a petition need not provide a construction of a claim limitation if correspondence between the claim limitation and the relevant portion of the claim chart is “sufficiently clear,” the Board found such correspondence was in this case unclear. The Board was not persuaded by Petitioner’s contention that its analysis applied the “ordinary and customary meaning” of the claim limitation.
Addressing Petitioner’s arguments that the prior art describes the “color changing cycle” limitation, the Board found it could not have overlooked those arguments because they were not made in the Petition. While Petitioner disputed the Board’s analysis of the prior art as well, the Board concluded the Petitioner regardless failed to address the claim language in the Petition.
Highlighting the interplay between claim construction and prior art analysis in a petition, this decision illustrates that reliance on only claim language or prior art claim charts in which correspondence with claim language is unclear fails to make a threshold showing for institution of an IPR. In deciding whether to offer a construction of a claim limitation—even one having an ordinary and customary meaning, petitioners are well advised to consider the importance of the limitation to understanding both the claim scope and the claim charts in the petition.