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

Denial of Petitioner’s Rehearing Request for Raising New Unpatentability Arguments PGR2015-00022

Takeaway: An attempt to supplement unpatentability reasoning not set forth in the petition is not a basis for granting a request for rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution of post-grant review. In the Board’s Institution Decision, the Board granted the Petition and initiated post-grant review as to certain claims of the ‘292 patent, but denied the Petition as to other claims. Continue reading

Granting Request for Rehearing based on Board’s Sua Sponte Identification of Unargued Basis for Earlier Prior Art Date IPR2015-01189

Takeaway: A priority benefit to an earlier filed application requires both that there be continuity to the earlier application and that the salient description is present in each application establishing the continuity.

In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s Decision Denying Institution of Inter Partes Review.  The Board had denied institution, holding that Petitioner had failed to establish a prior art date for the Kikinis CIP reference.  In granting rehearing, the Board identified an alternative route to establish an earlier prior art date for the Kikinis CIP, and indicated that another Institution Decision addressing the merits of the Petition would be forthcoming. Continue reading

Request for Rehearing of Final Written Decision Denied IPR2014-00688

Takeaway: Evidence of failure to include a real party-in-interest that is presented after entry of a final written decision will not be considered because it is late.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision regarding claims 1 and 15 of the ’607 Patent. The Board noted that a Final Written Decision is reviewed for abuse of discretion, and the party requesting rehearing bears the burden of showing that the Final Written Decision should be modified.  The Request must identify all matters the party believes were misapprehended or overlooked.

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Denying Request for Rehearing that Separately Argued Claims Previously Analyzed Together in Petition IPR2015-01545

Takeaway: Where challenged claims are analyzed together in a petition, those claims may not later be argued separately in a Request for Rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s denial of institution of inter partes review. Petitioner’s requested partial reconsideration on the following grounds: Continue reading

Request For Rehearing Granted-In-Part IPR2015-01047

Takeaway: In a request for rehearing, the movant must focus on areas that were misapprehended or overlooked by the Board.

In its Decision, the Board granted-in-part Patent Owner’s Request for Rehearing on the Board’s Decision to deny Patent Owner’s Motion for Additional Discovery. In that Decision, the Board found that “Patent Owner has not met its burden in showing additional discovery is in the interests of justice as required under 37 C.F.R. § 42.51(b)(2).” Patent Owner argued in its Request for Rehearing that “[s]ince the Motion was directed to improperly omitted [real parties-in-interest] in particular, the evidence presented in the Motion only needed to show beyond speculation that something useful would be uncovered as to the [real party-in-interest] issues. The Motion certainly met this standard.”

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Denying Rehearing of Decision Not to Institute Based on Lack of Showing of Abuse of Discretion IPR2015-01086

Takeaway: The panel that renders the decision on institution reviews its decision for an abuse of discretion when a request for rehearing is filed.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Decision not to institute trial on both grounds: (1) claims 1, 2, and 8 as anticipated by Nieboer; and (2) claims 1-13 as unpatentable as obvious over Nieboer and Kolter. When rehearing a decision on institution, an abuse of discretion standard is applied, and an abuse of discretion is “indicated 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.” Continue reading