On November 21, 2014, The Patent Trial and Appeal Board (PTAB) denied the petitioner’s request for rehearing of an earlier decision partially denying institution of inter partes review. In the earlier decision, the board had instituted inter partes review on claims 7-11, but had denied review of claims 1-6 and 12. In its request for rehearing, “[the petitioner] contends that its petition presented the ‘same evidence’ that was presented in [two other petitions requesting review of the same patent brought by different petitioners] and that because the board found ‘equivalent disclosures of [a prior art reference] sufficient to anticipate and/or render obvious claims 1-6 and 12 in those cases, we must do the same here.”

In rejecting petitioner’s argument, the board found that the evidence (three different expert declarations) presented in the three petitions was not the same evidence because “[t]he differences between [the expert’s] declaration in the present case and the one submitted in the [related] proceeding are material, and lead to the different results in our institution decisions.” 

The petitioner also argued that “[the board’s] ‘conflicting decisions’ in this and [related proceedings ‘undermine the predictability and uniformity of decision making by the PTAB. The board disagreed, stating that the decisions were not in conflict “because of the different records presented in each case . . . . The question before the board is whether petitioner has shown that the record in this proceeding establishes a reasonable likelihood that claims are unpatentable.”  Further, Judge Crumbley noted that “[i]nter partes reviews are adversarial, adjudicative proceedings . . .  [t]he rule [the petitioner] proposes—that every petition citing the same art must be decided identically, regardless of the arguments set forth in the petition—ignores the adversarial, adjudicative nature of an inter partes review.”

Petition for Inter Partes Review by Mitsubishi Plastics, Inc., IPR2014-00524 (PTAB November 21, 2014, Order).