Requests for Rehearing May Backfire on Patentees
As detailed earlier this week, a patentee’s decision to file a preliminary response in an IPR/CBM preliminary proceeding is not as straightforward as one would expect. Where such a preliminary response is imprudently pursued by a patentee this misstep can be further compounded by other optional filings post-Trial Order.
Subsequent to the filing of a preliminary response by a patentee the Patent Trial & Appeal Board (PTAB) will issue its decision. If unsatisfied with the Trial Order either party may file a Request for Rehearing as a matter of right within 14 days.
As is the case with the optional patentee preliminary response, just because you can request rehearing doesn’t mean you should.
The decision whether or not to institute trial is final and non-appealable. However, a PTAB Trial Order may be reconsidered under an abuse of discretion standard 42.71(c). In order to overturn all or part of a Trial Order the challenging party has the burden of demonstrating that the Board misapprehended or overlooked an aspect of the record.
In all but the most exceptional of circumstances the PTAB, like most courts, rarely finds an abuse of discretion warranting a change in course from an initial decision. Yet, some patentees take the “what do I have to lose” approach without appreciating they have much to lose.
First many such requests fail to appreciate the heightened standards and the need to identify a mistake in the record. Instead, many requests will argue that the “mistake” was the ultimate conclusion of the Board and attempt to present altogether new arguments to the record. Such a filing is not only a complete waste of time but will undermine your credibility with the panel conducting your trial.
Further, for patentees, such requests almost always follow failed preliminary responses. Here the inclusion of new arguments in the request for rehearing only serves to put your adversary on notice of your entire case. Providing advance notice of your forthcoming patentee response, and discovery plan (assuming the petitioner declarant is to be deposed a few weeks later, which is typical) is just not something you should be doing given the odds of success. To date, all of such requests have been denied.
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On the Petitioner side, a request for rehearing may be less of a strategic concern. This is because a petitioner may not have any other option to file a second petition for claims of the patent if the 12 month window is closed. Likewise, there is less of a concern of disclosing as yet unknown positions (i.e., the petition should have provided such in the first instance). Even if denied, the claims addressed in the petitioner Request will not be part of the trial proceeding.
To date petitioners have experienced more success with their requests for rehearing, however this is just a temporary statistical anomaly. Historically speaking, the PTAB has very rarely reversed course upon request for rehearing.