By Matthew L. Cutler, Principal
In PNY Tech., Inc. v. Phison Elec. Corp., (IPR2013-00472, Paper 16), Patent Owner filed a request for rehearing of the Decision on Institution contesting the Board misinterpreted the governing law regarding inherency. To date, less than 10% of such Motions for Reconsideration have been granted. Because the Board granted the motion-in-part, such a rarity merits further investigation.
In its decision to institute, the Board found a reasonable likelihood that the challenged claims were unpatentable in view of the Minneman reference. Specifically, the Board found that it was “conceivable” that a limitation of the challenged claims requiring a concave feature was present in Minneman, even though it was not expressly set forth in the reference. Of course, a reference may anticipate inherently if a claim limitation that is not expressly disclosed ‘is necessarily present, or inherent, in the single anticipating reference.’ Further, inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ Order at 3.
Because it misapplied the law of inherency, basing its decision on a conceivable notion that a claimed feature was present in a prior art reference, rather than a finding that the feature was necessarily present, the Board agreed that it had abused its discretion and granted the motion-in-part.