In its Order, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision Denying Institution of Inter Partes Review. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
Petitioner argued that the Board had adopted an incorrect standard for determining priority, based on some loose language in the Board’s decision denying institution. The Board clarified that a new standard was not adopted by the Board, and that the decision was made using the correct standard. Petitioner also argued that the Board had not considered its arguments regarding whether a feature disclosed in the provisional application inherently supported the claimed language. The Board clarified that the arguments were considered, just not found persuasive. Thus, the Board concluded that there was no abuse of discretion in its earlier decision, and thus Petitioner’s request was denied.
Dell, Inc. v. Acceleron, LLC, IPR2013-00443
Paper 15: Order Denying Petitioner’s Request for Rehearing
Dated: March 12, 2014
Patent 6,948,021 B2
Before: Thomas L. Giannetti, Trenton A. Ward, and Jeremy M. Plenzler
Written by: Ward