TRW Automotive US LLC v. Magna Elecs., Inc.
Addressing the petitioner’s request for rehearing of a denial for review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) denied the petitioner’s request for rehearing of the earlier denials of institution in three inter partes review (IPR) proceedings of the same challenged patent, concluding the petitioner, in its original petitions, failed to plead the specific invalidity grounds raised in its rehearing request. TRW Automotive US LLC v. Magna Elecs., Inc., Case IPR2014-00256 (PTAB, July 31, 2014) (Arbes, APJ).
Petitioner TRW filed a request for rehearing of the denial of institution of an IPR for numerous claims in a patent owned by Magna Electronics. The Board denied the request, explaining that the original denial of the petition was not based on “an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.”
The Board explained that TRW improperly raised arguments in its request for rehearing not included in its petition. For example, the petition stated the prior art reference “shows the limitations” of the claims, while in its request for rehearing, TRW posited the prior art reference “suggests” the claim limitation. The Board explained that by using the word “shows,” the petition relied on the prior art reference as anticipating a claim limitation, and TRW was now barred from arguing for rehearing on the basis that the prior art as rendering the claim limitation obvious. The Board additionally noted that, in its request for rehearing, TRW improperly relied on portions of a prior art reference not cited in the original petition and that it was barred from raising them as arguments for rehearing. Finally, PTAB explained that the original petition “did not provide a facially logical explanation of why it would have been obvious” to combine the prior art references and that TRW’s attempt to argue, on rehearing, a motivation to combine the references was improper, as the denial of institution was based solely on the arguments in the original petition.