Denial of Request for Rehearing Alleging that Evidence had been Disregarded IPR2014-00780

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Takeaway: A finding by the Board that expert testimony is unpersuasive for lack of evidentiary support is not likely to be modified through a Rehearing Request.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Final Written Decision finding claims 6 and 8 of the ’835 patent unpatentable. The standard of review for rehearing requests set forth in 37 C.F.R. § 42.71(d) places the burden on the challenging party to show that a decision should be modified.  The Request must “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Continue reading

Denying Request for Rehearing where Arguments Deemed Not Commensurate with Claim Scope CBM2015-00010

Takeaway: Arguments related to either patentability or whether claims qualify for covered business method patent review are likely not persuasive if they are not commensurate in scope with the claims of the challenged patent.

In its Decision, the Board denied both parties’ requests for rehearing of the Board’s Decision to institute trial with respect to some of the asserted grounds in the Petition. The Board reviews decisions for an abuse of discretion, which “may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” The party requesting rehearing has the burden to show the decision should be modified and “must identify specifically all matters the party believes the Board misapprehended or overlooked.” Continue reading

Denying Request for Rehearing CBM2014-00157

Takeaway: A request for rehearing is not an opportunity to reiterate arguments previously addressed in the Board’s Decision on Institution, and merely express disagreement.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Decision to institute covered business method patent review of claims 1-21, 24-27, 29, 30, 32, 33, and 36-39 of the ’409 patent, and denied Patent Owner’s request for an expanded panel. Continue reading

Denying Request for Rehearing IPR2014-00553

Takeaway: An argument raised by a patent owner in one proceeding could create a substantive difference between two related proceedings, and therefore, could also negate a finding that one of the two proceedings is redundant.

In its Decision, the Board denied Patent Owner’s request for rehearing by an expanded panel of the Board’s Decision to Institute inter partes review. Initially, the Board had denied institution on redundancy grounds in light of the IPR2014-00552 proceeding. In particular, the Petition in the instant proceeding was found to not “add substantively to the grounds on which [the Board] instituted inter partes review in the related proceeding.” However, on rehearing, the Board decided to institute trial and then denied Patent Owner’s Request for Rehearing. Continue reading

Denying Petitioner’s Request for Expanded Panel IPR2014-00771

Takeaway: The fact that a panel of the Board issues a split decision is not by itself a reason to allow for review by an expanded panel.

In its Decision, the Board denied Petitioner’s request that an expanded panel be allocated to decide the merits of the request for rehearing the denial of institution, and denied Petitioner’s request for rehearing. Continue reading

Denying Second Request for Rehearing IPR2014-00319

Takeaway: The parties are not permitted to request panel expansion.

In its Decision, the Board denied Petitioner’s request for relief in the form of a second rehearing of the decision not to institute inter partes review.  In particular, the Board concluded that Petitioner’s Notice had failed to show sufficient basis for a second request for rehearing under 37 C.F.R. § 42.21(c)(1). Continue reading

Denying Rehearing of Institution Denial IPR2014-00506

Takeaway: The Board has discretion to deny institution when the art or arguments raised in a second petition for inter partes review are substantially the same as in a first petition and may consider whether any new prior art or arguments raised in the second petition were known or available to the petitioner at the time of filing the first petition.

In its Decision, the Board denied Petitioner’s request for rehearing of its decision declining to institute inter partes review of claims 13-14, 16, 20-22, 24-25, 27, 31, and 33 of U.S. Patent No. 6,974,569 B2 and also denied its request for panel expansion. Continue reading

Denying Rehearing and Expanded Panel Requests IPR2014-00236, 239, 240

Takeaway: A rehearing request of a decision denying institution must include more than a mere disagreement with the Board’s analysis in the decision, and allegations of a judge’s impropriety tainting the decision on institution should be supported by more than speculation.

In its Decision, the Board denied Petitioner’s Request for Rehearing and its Request for Expanded Panel. The Board had denied institution of inter partes review in each of the three Petitions as not having been timely filed within the one-year period set forth in 35 U.S.C. § 315(b).  Petitioner argued in its Rehearing Request that the Board’s Decision was based on a clearly erroneous interpretation of the statute.  Petitioner also requested an expanded panel because of “an alleged appearance of impropriety regarding the judge who authored the Decision Denying Institution” and the importance of the time-bar issue. Continue reading