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PTAB trial pre-institution decisions need oversight

[below is part 1, follow the links for related part 2part 3 and part 4]

This will be the first of a multi-part series. Here's a glimpse of just one case that will be focused on. Why should there be oversight? Because without the possibility of appeal, close calls can't be reconciled pre-institution. And for pre-institution decisions, close calls should go to the Petitioner - because that's the point of a "trial." 

Here's the decision denying request for reconsideration. For this quick post, we'll just focus on the claim construction of the Board, and then the rationale for denying the request.

Claim 1 of the '492 patent for the decision recites:


The limitation at issue was

a receiver address comprising a scalable address of at least one remote device


Below is the claim construction for the term "scalable address," the term under debate in the decisions. Ignore the fact that maybe the idea of a device having a "scalable address" makes no real sense (the device has one address to distinguish itself from other devices); we won't focus on that here for now. For now, just consider the determined interpretation of the phrase "scalable address."


The Decision actually adopted the proposed construction of the Petitioner because the Petition proposed the exact same construction determined by the district court in a number of underlying litigations. Moving on, the "scalable address" essentially needs to be of variable size in some way with respect to the "size and complexity of the system." Variable size, at least pre-institution, is what was considered in the context of the decision.

Let's look at the proof that the Board considered in both the pre-institution decision and in the decision deny reconsideration. The proof was the same, and it's basically an illustration of the address data as used in the protocol because that's the way the prior art reference showed how addresses of devices were used by the protocol. We won't do a deep dive today on what the arguments were, that will come in later posts. Here is the excerpt (same in all circumstances) of Figure 3A that was included in the petition, the decision denying institution, the reconsideration petition, and the petition denying reconsideration.


What was at issue was the address of the destination receiver (K8MM0) appearing in the address bits A1-A7. There's of course a corresponding illustration of the originating receiver address (WB4JFI) in the address bits A8-A-14. The claim required only a scalable address of the destination receiver. 

Each decision of the Board concluded that the destination receiver address was not "scalable" because of how the address appeared in the frame of the message, not that the address of a receiver could be a different number of characters (the prior art explains that a transceiver address could be up to 6 characters, and if less than 6 characters, space padding is used in the frame).

So what did the Board conclude? Here's the reconsideration decision conclusion:

We'll leave the proposition at this - number of spaces in a frame for the address? Protocol frame representing an address? How does that resolve whether the address is scalable or not? The decision actually concludes that the address can be "either a five-character or six-character address." So how the protocol, or the frame used by the protocol, encapsulates the address is totally irrelevant to whether the address is scalable. The reconsideration decision completely misses the mark by focusing on the use of the characters to represent the address - the definition mentions nothing of use, because the scalable address is the address of the device, not how the address is used.

The Petition essentially argued that the receiver address could be 5 or 6 characters for a given device, and therefore, the receiver address was scalable (the address of a given receiver was variable).

None of this matters. The petition was denied, as was the reconsideration request. Because there's no oversight at this point -- pre-institution. Even though the standard is basically whether the Petitioner can ultimately prove by a margin of 51 to 49 that the prior art shows a "scalable address." Essentially the Board concludes that there's no realistic probability that the Petitioner can prove with 51% certainty that an address of a receiver, that can be represented by either 5 or 6 characters, is "scalable."

More later. But that's why someone else other than the original decision makers should consider the issues on reconsideration, or after denial of reconsideration.

[related part 2part 3 and part 4]