A question being raised more and more frequently by post-grant practice practitioners and parties is whether seeking reconsideration of Final Written Decisions (“FWDs”) by the PTAB in IPR and CBM proceedings is worth the time, effort, and expense. As IPR and CBM proceedings only began following the passage of the America Invents Act in September 2011 and took 18 months to proceed to final written decisions, there was originally little guidance based upon previous proceeding as to the potential success and utility of seeking reconsideration of FWDs. The relative success of the post-grant proceedings has resulted in an increasing number of petitions being filed before the PTAB, from 58 IPR and 7 CBM petitions per month in 2013 to 125 IPR and 14 CBM petitions per month in 2014. Since the majority of these petitions are instituted and result in FWDs, there is an increasing dataset to review when considering the potential strategic and tactical advantages in requesting reconsideration of a FWD versus merely proceeding directly to an appeal to the Federal Circuit.
Since 2011, there have been 662 FWDs that have been reached in IPR and CBM proceedings. Of those FWDs, over 600 have been appealed directly to the Federal Circuit Court of Appeals, while 65 have first proceeded through requests for reconsideration. Only 4 requests for reconsideration of FWDs have been granted to date. This article discusses each of those decisions and the lessons that can be learned from them.
PTAB Decisions Granting Requests for Rehearing of Final Written Decisions
In IPR2014-00220, the PTAB panel granted the request for rehearing to address that fact that a claim should have been found not unpatentable for the same reasons as a broader but similar claim was found not unpatentable. Notably, Petitioner did not oppose the request for rehearing. In the brief decision, the PTAB panel agreed that the claim in question was narrower than the claim found not unpatentable and issued a clarifying order that both claims were determined to be not unpatentable.
A request for rehearing was also granted in IPR2013-00290. In that proceeding, the PTAB panel appears to have granted the rehearing request merely to strength the underlying decision for any potential appeal, rather than to reconsider its initial decision. Specifically, the PTAB panel addressed the extent to which the FWD was dependent upon whether one prior art reference was incorporated by reference into a second reference, allowing for the two references to be considered as a single reference.
The panel reinforced its original decision by explaining at length the reason that it rejected the incorporation by reference argument, strengthening its original decision by addressing issues raised by the Petitioner that would have otherwise not been explained and noting that the issues raised were based upon “attorney argument” rather than evidence or materials from the underlying petition. The panel then spent a considerable amount of time distinguishing various Federal Circuit caselaw that the Petitioner had cited as supporting its position in order to distinguish the specific facts of the proceedings.
A December 2015 decision actually addressed the overturning of substantive arguments in IPR2013-00535. In that decision, the PTAB panel agreed to reconsider its original decision finding unpatentable claims 1-9, 11, 12, 15, and 18-21 of the ‘712 patent. Specifically, the Patent Owner requested reconsideration of a single claim (claim 9) and the decision finding that claim obvious. The request contended that the PTAB misapprehended the teachings and disclosure of the prior art reference relied upon in the obviousness combination. The panel admitted that it incorrectly read the disclosure of the reference, but nevertheless still found that the combination of references render obvious the challenged claim. Specifically, the panel found obvious the choice of administering an immunosuppressant before an adverse immune response developed in the patient, despite the art only disclosing the use of an immunosuppressant after a patient has experienced an adverse immune response to GAA administration. While one of the PTAB judges wrote a dissenting opinion, the grant of the request for reconsideration appears to have merely provided the PTAB panel an opportunity to redraft their decision to find another basis on which to determine the challenged claim unpatentable based upon the record available to them.
In just a single request for reconsideration has a panel actually reversed its substantive findings of patentability with respect to challenged claims in IPR2014-00312. In a November 2015 decision, the PTAB panel found that it had overlooked arguments that had been included in the original Petition with respect to the disclosures of a particular reference. The panel relied upon those disclosures to find certain challenged claims obvious and noted that Patent Owner had failed to argue against the specific relied upon disclosure.
Factors for Whether to File a Request for Reconsideration
When considering whether it would be worthwhile to file a request for reconsideration, there are many factors to consider. One is the timing of orders of requests for reconsideration, as some parties may wish to delay or expedite the process of seeking redress with the Federal Circuit. A review of requests for reconsideration of FWDs reveals that the time periods in which PTAB panels rule on such motions vary widely, with some panels only taking a few weeks to rule on such requests and others taking many months.
It appears that a general trend is occurring in which PTAB panels are delaying resolution of both requests for reconsideration of FWDs as well as denied institution decisions. This may be explained by the fact that decisions on such requests lack any statutory deadlines, resulting in PTAB panels focusing their limited resources on institution decisions, trials, and drafting FWDs that have firm statutory timing deadlines.
Other factors to consider when determining whether a request for reconsideration is worthwhile include the nature of the redress being sought, including whether the challenge of the FWD is based upon a flawed legal analysis versus a flawed understanding of the arguments or disclosures of the prior art grounds argued at the trial. One potential advantage of seeking a request for reconsideration would be that even if such a request is denied, the PTAB will be forced to further explain the basis for its decision, which may provide additional avenues of attack for an appeal brief. Requests for reconsideration also may delay a Federal Circuit appeal, which depending on the status of any underlying litigation, stay of proceedings, or other proceeding may be advantageous to an appellant. Another factor to consider is whether such a request will burden and annoy the PTAB panel, which frequently is presiding over multiple IPR or CBM proceedings between the same parties.
The decisions and trends discussed above confirm that at present requests for reconsideration of FWDs are almost uniformly denied, resulting in a waste of time and money for the filing party. Requests for reconsideration of institution decisions fair little better, and absent a change in the statute permitting the ability to appeal, lack any opportunity to seek further redress. Absent special circumstances or glaring errors in the PTAB panel analysis, requests for reconsideration of FWDs appear to best be avoided absent special circumstances given their exceeding low success rate and likelihood that even if granted, will only provide the PTAB panel an additional opportunity to strengthen the original decision.