Takeaway: When arguing for multiple grounds of unpatentability as to a single claim, Petitioner must show that those grounds are not redundant by making a meaningful distinction between the grounds. Otherwise, the Board may only institute trial on one of the grounds.

In its Order, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision Not to Institute an inter partes review as to any challenged claims of the ‘186 patent.  The Petitioner’s request failed to show that the Decision Not to Institute was an abuse of discretion.

In particular, with respect to the first ground of unpatentability, the Petitioner argued that new evidence was presented in the Petition regarding a particular combination of prior art references originally considered during prosecution of the ‘186 patent. The Board disagreed, stating that the Decision indicated that the PTO had given considerable consideration to the references and that the Petitioner failed to provide any new evidence to establish a reasonable likelihood of prevailing on this ground.

With respect to the remaining grounds, the Board held that Petitioner had failed to show an abuse of discretion in the Board’s Decision Not to Institute, and noted that the Request for Rehearing cannot be used either to augment prior, unsuccessful arguments or to present new arguments not found in the Petition.

Excelsior Med. Corp. v. Robert F. Lake, Jr. and Jeffrey S. Tennant, IPR2013-00494
Paper 12: Decision on Petitioner’s Request for Rehearing
Dated: April 17, 2014
Patent 7,282,186
Before: Grace K. Obermann, Sheridan K. Snedden, and Christopher L. Crumbley
Written by: Snedden