Under 37 C.F.R. § 42.71(d), a party dissatisfied with a decision may file a single request for rehearing of the decision, without prior authorization of the Board. The burden of showing a decision should be modified lies with the party challenging the decision.
Veeam Software Corp. v. Symantec Corp., IPR2013-00142, Paper 17 (PTAB Sept. 30, 2013). The Board altered its decision instituting an anticipation challenge for four claims. The Board agreed that it had overlooked patent owner’s argument in its preliminary response that the asserted reference did not disclose a limitation of the claims.
Microsoft Corp. v. Virnetx Inc., IPR2014-00614, Paper 12 (PTAB Oct. 30, 2014). The Board altered its institution decision to include review of two claims that the Board had omitted from its institution decision due to a “transcription error.”
Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00553, Paper 19 (PTAB Feb. 20, 2015). The Board instituted trial after previously denying institution for grounds of challenge which were deemed to be redundant with other grounds in another proceeding. After institution in the other proceeding, patent owner alleged that an asserted reference was not prior art under 35 U.S.C. § 103(c)(1). The Board agreed that it was appropriate to reconsider the denied grounds in view of patent owner’s challenge to the prior art in the other proceeding under § 103(c)(1). On reconsideration, the Board agreed that petitioner had demonstrated a reasonable likelihood of prevailing with respect to one of the asserted grounds.
Square, Inc. v. Thick Computer Corp., CBM2014-00159, Paper 52 (PTAB Feb. 9, 2016). The Board denied patent owner’s request for rehearing of the Board’s final written decision. The Board denied rehearing because patent owner did not identify where the arguments, citation or evidence, as presented in the rehearing request, were previously addressed in the record. In the interests of due process and fairness, the Board cannot entertain arguments on rehearing that were not presented earlier.
Presidio Components, Inc. v. AVX Corp., IPR2015-01332, Paper 21 (PTAB Feb. 18, 2016). Mere disagreement with the Board’s analysis or conclusion is not a sufficient basis for rehearing. It is not an abuse of discretion to provide analysis or conclusion with which the requesting party disagrees.
Shenzhen Liown Elecs. Co., Ltd. v. Disney Enterprises, Inc., IPR2015-01656, Paper 13 (PTAB Mar. 18, 2016). Petitioner cannot contend that the Board erred in construing the plain and ordinary meaning of a claim term, which was consistent with patent owner’s proposed construction, when petitioner did not provide testimony, documentary evidence or analysis in the petition with regard to how the term would have been understood by one skilled in the art in light of the specification of the challenged patent.
AllSteel Inc. v. Dirtt Environmental Sols. Ltd., IPR2015-01690, Paper 13 (PTAB Apr. 4, 2016). The Board denied petitioner’s request for rehearing of the decision denying institution for all challenged claims. The Board indicated that petitioner did not cite ¶¶ 48-51 of its expert’s declaration to support its argument that it would have been obvious to reverse certain parts of an asserted reference. In any event, the Board disagreed with petitioner’s newly presented arguments that ¶¶ 48-51 provide a sufficient factual basis to support the expert’s conclusion that the rearranging of parts would work the same as the original arrangement. The referenced paragraphs address the original arrangement, not the modified arrangement. As stated in the institution decision, the expert’s testimony regarding the modified arrangement is conclusory. The panel is not obligated to accept, without a sufficient factual basis, conclusory statements as true. Something more was needed, and petitioner failed to provide it.
Core Survival, Inc. v. S&S Precision, LLC, PGR2015-00022, Paper 15 (PTAB Apr. 8, 2016). The Board denied petitioner’s rehearing request because it presented new arguments not presented in the petition. A rehearing request is not the avenue to supplement the reasoning for the unpatentability of challenged claims. The Board partly granted institution but denied an obviousness challenge because petitioner did not present sufficient reasoning to support the obviousness challenge. The Board determined that petitioner’s rehearing request largely relied on new arguments and citations to one of the references that were not presented in the petition. Petitioner’s previous “cursory analysis and bare citations may gesture in the general direction that the Rehearing Request now argues so vehemently,” but the Board was not persuaded that the arguments in the petition were sufficient to institute that ground.
Sandisk Corp. v. Netlist, Inc., IPR2014-00971, Paper 36 (PTAB Apr. 27, 2016). The Board partially granted and partially denied petitioner’s request for rehearing of the final written decision. Initially, the Board denied petitioner’s rehearing request that the Board improperly excluded evidence from its reply as to the challenge of claim 4. In the petition, petitioner challenged claim 4 as being unpatentable over a primary reference and a secondary reference. In the institution decision, the Board sua sponte instituted trial based on obviousness over the primary reference alone, based on the Board’s determination that petitioner likely would not prevail on the asserted obviousness challenge. The Board, however, refused to consider evidence and arguments submitted with the reply as to the obviousness challenge over the primary reference alone. The Board indicated that the instituted ground was based on information presented in the petition, and therefore, petitioner could not present new arguments and/or evidence. The Board granted petitioner’s rehearing request as to the asserted unpatentability of two claims.
Mylan Pharmaceuticals Inc. v. AstraZeneca AB, IPR2015-01340, Papers 15, 16 (PTAB May 2, 2016). The Board granted institution after previously denying institution. The judge who had authored the decision denying institution had previously represented patent owner in several lawsuits, and had been a partner with the law firm representing patent owner. In its request for rehearing, petitioner did not suggest that there was an actual impropriety, but indicated that the mere appearance of possible impropriety is sufficient justified reconsideration by a newly composed panel. The judge who authored the institution decision was replaced in the panel which granted reconsideration and instituted the proceeding.
SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2015-01790, Paper 16 (PTAB May 17, 2016). The Board denied petitioner’s request for rehearing of the decision not to institute an IPR for several challenged claims, despite the same panel determining in an earlier IPR proceeding that other claims of the patent are unpatentable based on the same grounds of challenge. Petitioner argued that the Board “ignored the fact that the Final Written Decision of IPR2013- 00111 as well of the bulk of the entire proceedings of the IPR2013-00111” contradicts the Board’s decision not to institute. The Board was not persuaded to reverse its institution decision, however, indicating that “Petitioner does not explain how the Final Written Decision of IPR2013-00111 or ‘the bulk of the entire proceedings’ of that case qualify as either a patent or a printed publication under the statute.” The Board noted that, “to qualify as a printed publication under § 102, a reference ‘must have been sufficiently accessible to the public interested in the art’ at the time the patent application at issue was filed. The results of IPR2013-00111 were, by definition, not available until well after the ’387 patent issued.” In addressing the inconsistencies of the decisions, the Board indicated that “[a]lthough, where present, illogical results are unfortunate, inter partes reviews are adversarial proceedings and our rules have been set up to respect procedural fairness.” The Board emphasized that the institution decision was based, in part, on inadequacies in the petition.
Google Inc. v. Zuili, CBM2016-00008, Paper 22 (PTAB June 15, 2016). The Board granted petitioner’s request for rehearing of the Board’s decision denying institution of obviousness challenges to the claims. The Board had instituted only the § 101 challenges to the claims. The Board agreed that it had misapprehended petitioner’s arguments in relation to the prior art references, and that petitioner had met the threshold of 35 U.S.C. § 324 to institute trial on the obviousness grounds.
Sony Mobile Comms. Inc. v. SSH Comms. Security Oyj, IPR2015-01869, Paper 16 (PTAB July 21, 2016). The Board partly granted patent owner’s request for rehearing of the decision granting institution of review. Patent owner correctly pointed out that petitioner relies on an asserted reference to meet the limitations of several claims. “Our Decision indicated incorrectly that the grounds upon which we did not institute, the ‘remaining grounds’ including [the reference], were redundant. However, because [the reference] is not redundant as to claims 4, 11, 21, and 28,” the Board addressed those claims in the rehearing decision. The Board determined that petitioner did not provide sufficient motivation to modify the base reference to meet the limitations of those claims. The Board amended its institution decision to not institute review for claims 4, 11, 21, and 28.
Camelbak Prods., LLC v. Ignite USA, LLC, IPR2015-01034, Paper 39 (PTAB Aug. 4, 2016). A request for rehearing is not an opportunity to express mere disagreement with the Final Written Decision or with the Board’s weighing of the evidence. The proper course is to appeal, not file a request for rehearing to re-argue issues that already have been considered and decided.
Nestle Healthcare Nuitrition, Inc. v. Steuben Foods, Inc., IPR2015-00249, Paper 78 (PTAB Sept. 7, 2016). The Board denied patent owner’s request for rehearing in which patent owner alleged that the Board overlooked an argument that patent owner presented at oral argument. The Board disagreed because patent owner presented the argument for the first time at the oral argument. An argument may not be raised for the first time at oral argument. 37 C.F.R. § 42.70(a). Therefore, the Board’s decision did not overlook patent owner’s argument.