In an earlier blog post from last June, we were unable to find any successful Requests for Rehearing or Reconsideration of a Final Written Decision and concluded that, in most instances, such requests are generally a waste of resources. However, while the PTAB has continued to deny the vast majority of motions for rehearing of a final written decision, it has now granted a few. Those limited number of successful rehearing requests demonstrate that, where you can point to something specific that the Board has overlooked, a request for rehearing may be worthwhile. However, where the Board merely disagrees with your argument, don’t bother.
In Square, Inc. v. REM Holdings 3, LLC, IPR2014-00312, the petitioner’s request for rehearing was granted as to two claims, but denied with respect to three others. For claims 4 to 9, the petitioner successfully argued that the Board erred when it stated that the petitioner did not rely upon a particular prior art reference, Odagiri, as disclosing a housing. To the contrary, the petitioner was able to identify the portion of its claim chart that specifically stated that Odagiri illustrated a housing. Accordingly, the Board modified its final written decision to find claims 4 and 9 obvious over a combination including Odagiri. However, petitioner’s request for rehearing as to three other claims was denied where the petitioner was unable to point to such a clear statement that had been overlooked.
In Valeo North America, et al v. Magna Electronics, Inc., IPR2014-00220, the petitioner sought very narrow rehearing on the grounds that the Board erred when it found that one claim, was unpatentable despite its near identity with another, slightly broader claim the Board found patentable. The Board granted the petitioner’s rehearing request and modified its final written decision to conclude that the narrower claim was likewise patentable. It should be noted, however, that the petitioner did not oppose the rehearing request.
In Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2013-00027, the Board granted a request to rehear its previous denial of patent owner’s Motion to Amend. In its final written decision, the Board concluded that a challenged claim was not unpatentable over prior art, but was indefinite under § 112, ¶ 2. The proposed substitute claim contained the same expressly recited limitations as the challenged claim but corrected the indefiniteness problem. In originally denying the motion to amend, the Board found that 5th Market had not shown the amended claims patentable over the prior art. In the decision on rehearing, however, the Board was convinced by 5th Market’s argument that, where the claim that is sought to be amended was not found unpatentable over the prior art, no further showing by the patent owner was needed to amend the claim to correct the indefiniteness problem. Both parties have appealed the decision to the Federal Circuit.
Unfortunately for the parties requesting rehearing in the remaining cases where the Board granted the request, the Board ultimately confirmed its original decision:
- In BioMarin Pharmaceutical, Inc. v. Duke University, IPR2013-00535, the Board agreed with the requester that one of the references cited in its original obviousness analysis did not actually disclose the limitation for which it was cited, but then determined that the limitation would have been a predictable variation of what was disclosed in that reference.
- Similarly, in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290, the Board supplemented its analysis of petitioner’s incorporation by reference argument, but ultimately declined to modify its earlier decision.
- In Captioncall v. Ultratec, Inc., IPR2013-00542, 00543, and 000544, the Board modified its earlier analysis regarding the rationale for combining references without altering its conclusion. Similarly, in Captioncall v. Ultratec, Inc., IPR2013-00549, while the Board agreed that it misspoke in characterizing one prior art reference, it found that the correction did not affect the Board’s analysis.
In each instance, the requester may have made a victory on appeal more difficult by having sought the rehearing because, ultimately, the Board did not change its conclusion and arguably better supported its original conclusion. Thus, even in light of these more recent decisions granting rehearing, such requests should be used sparingly and only in instances where a party can point to a clear mistake make by the Board.