Takeaway: A request for rehearing will be denied when the movant is essentially rearguing the same points it made previously that were considered and discussed in the prior decision.

In its Decision, the Court denied Petitioner’s request for rehearing of the Board’s decision denying inter partes review of the challenged claims of the ’685 Patent.

The Board noted that the panel reviews the decision for an abuse of discretion in reviewing a rehearing request, and that such abuse is found where the decision was based on erroneous conclusions of law, clearly erroneous factual findings, or a clear error of judgment.

Petitioner argued that the Board improperly applied the “reasonable likelihood” of success standard by requiring the Petitioner to persuade the Board that its references constitute prior art before instituting trial. Specifically, Petitioner contended that it met the proper standard by showing there was at least a 50% chance that Petitioner would establish that the posters were prior art printed publications.  The Board noted that in its Decision, it stated that Petitioner had not made the “threshold showing” that the posters were sufficiently publicly accessible, and had “not demonstrated adequately” that the posers constitute prior art.  Therefore, the Board was not persuaded that it made a legal error in denying the petition on that basis.

Petitioner also asserted that the Board misapprehended its arguments regarding “admissions” by Patent Owner in Information Disclosure Statements (IDSs). The Board noted that Petitioner is essentially rearguing the same assertions that were already considered and addressed in the Decision.  As the Board noted in the Decision, the cited statements in the IDSs did not provide sufficient evidence of an “admission.”

Petitioner further argued that the Board applied the wrong law regarding the alleged admissions by Patent Owner in the IDSs, and that the Board misapplied the facts in making the legal determination. The Board found that it engaged in the proper inquiry underIn re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), to determine the asserted prior art’s status as a printed publication.  Further, the Board noted that Petitioner is again essentially rearguing the arguments that were already considered and addressed in the Decision.  To the extent that Petitioner is making new arguments, the Board noted that such arguments will not be considered on reconsideration.

Coalition for Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc., IPR2015-00720

Paper 21: Decision Denying Petitioner’s Request for Rehearing

Dated: April 8, 2016

Patent 8,663,685 B2

Before: Michael P. Tierney, Lora M. Green, and Jacqueline Wright Bonilla

Written by: Bonilla