As set forth in the statute and upheld by the Supreme Court in Cuozzo,[1] the Patent Trial and Appeal Board’s (“PTAB” or “Board”) institution decisions are “final and nonappealable.”[2] Accordingly, a petitioner who fails to get a review instituted by the Board has limited options to maintain its validity challenge. One recourse available for a dissatisfied petitioner is filing a request for rehearing.

A request for rehearing is simply a request to the original panel to reconsider its original decision based on an abuse of discretion standard. “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”[3] In other words, the request should not merely be an attempt to reargue positions that the Board disagreed with in its initial decision.

Most often, the Board declines a request for rehearing, which may discourage a practitioner from seeking one. However, given the lack of options, dissatisfied petitioners should always consider filing a request for rehearing, especially if a petitioner can specifically identify an overlooked or misapprehended matter on the record.

For example, in Cook Group Incorporated and Cook Medical, LLC v. Boston Scientific Scimed, Inc., IPR 2017-00134, Paper No. 23 (P.T.A.B. Dec. 18, 2017), the Board granted a rehearing over its original decision denying institution of a challenged claim in U.S. Patent No. 8,709,027 (“the ’027 patent”) after determining that it misapprehended a claim limitation and overlooked evidence identified in the petition.

The ’027 patent relates to a method and a medical device for causing hemostasis of blood vessels along the gastrointestinal tract. The ’027 patent consists of three independent claims (i.e., claims 1, 13, and 20). Claims 1 and 13 are directed to a medical device, and claim 20 is directed to a method of inserting the medical device into a body.

After being sued by Boston Scientific for infringement of the ’027 patent, Cook filed an IPR petition challenging the patentability of the claims on four separate grounds. Specifically, Cook asserted that claims 1, 3-6, 13-15, 17, and 20 were anticipated by U.S. Patent No. 5,749,881 (“Sackier”) (i.e., ground 1) and that claims 1-20 were obvious over Sackier in view of U.S. Patent No. 5,843,000 (“Nishioka”) (i.e., ground 2). Cook further contended that claims 1-12 and 20 were anticipated by U.S. Patent No. 5,626,607 (“Malecki”) (i.e., ground 3) and that claims 1-12 were obvious over Malecki (i.e., ground 4).

The Board instituted review only on ground 2 that claims 1-19 were obvious over Sackier and Nishioka. In reaching its decision to decline review of claims 1-20 based on ground 1, the Board found that Sackier did not disclose the recited feature “the control member moved distally relative to the clip,” and held that all three independent claims, including claim 20, required such a feature. Nonetheless, the Board found that Nishioka cured Sackier for this deficiency, thereby instituting review of claims 1-19 based on the ground of obviousness. However, the Board declined review of independent claim 20 based on ground 2 because the Board found that Cook improperly combined features from two different embodiments in Sackier, a first clip shown in FIGS. 11-14 and a second clip shown in FIGS. 15-17, to meet the recited step “positioning the medical device at a desired deployment location.” The Board supported its position by asserting that the clip shown in FIGS. 11-14 of Sackier is intended to be easily detached within the body, whereas the clip shown in FIGS. 15-17 of Sackier cannot be detached from a clip applier within the body. The Board further found that Malecki failed to disclose or suggest the recited feature “the control member is moved distally relative to the clip,” thereby declining to institute review of claims 1-12 and 20 based on grounds 3 and 4.

Following the Board’s decision to decline review of claim 20, Cook filed a request for rehearing, identifying two particular matters that were misapprehended or overlooked by the Board. First, Cook asserted that the Board mistakenly held that claim 20 included the recited feature “the control member moves distally relative to the clip.” Second, Cook contended that the Board overlooked evidence identified in the petition that demonstrated that the clip shown in FIGS. 15-17 of Sackier detached from a clamp applier within the body. Cook’s request concluded by asking the Board to reconsider independent claim 20 over grounds 1 and 2 in view of the two overlooked or misapprehended matters.

The Board found both of Cook’s arguments to be persuasive, acknowledging that it mistakenly held claim 20 to include the recited feature “the control member moves distally relative to the clip,” and overlooked evidence that demonstrated that the clip shown in FIGS. 15-17 of Sackier detached from a clamp applier. Accordingly, the Board readdressed claim 20 over the first and second grounds.

As to its review of claim 20 on ground 1, the Board maintained its decision declining institution because Cook picked features from distinct embodiments in Sackier to meet a claim element. The Board noted that anticipation cannot be established by combining features from unrelated embodiments in a single reference. However, in its review of claim 20 on ground 2, the Board retracted its initial non-institution decision and held that Cook established a reasonable likelihood that it would prevail in showing that claim 20 is obvious over Sackier and Nishioka. Specifically, the Board found that Sackier suggests the recited step “positioning the medical device at a desired deployment location,” in light of the overlooked evidence.

This case demonstrates that filing a request for a rehearing may be an effective measure to persuade the Board to reconsider its initial institution decision — perhaps even retract its initial decision — if a practitioner can bring to light any submitted evidence not considered in the institution decision or any legal errors, such as claim construction, that would alter the outcome. However, practitioners should be cautious not to use a request for a rehearing as simply an attempt to convey disagreements with the Board’s findings.