Rehearing? PTAB Mostly Says “We Heard You Well Enough the First Time…” – Part II

by Harness, Dickey & Pierce, PLC

Having considered the numerous requests for rehearing filed in relation to orders granting an IPR trial (HERE), we now turn to all the other orders relating to requests for rehearing, including the one order that actually granted such a motion:

On Order Denying Institution of Inter Partes Review Trial

Dominion Dealer Solutions, LLC v. Autoalert, Inc., IPR2013-00220 (Paper 13). Petitioner sought rehearing of decision not to institute IPR based on the grounds that the Board substituted its own view of the facts over expert testimony and overlooked disclosures in the cited references. The Board discarded the first argument, finding that there is no legal basis for movant’s position that “uncontested factual evidence must be accepted by the Board.” Movant’s expert’s testimony was contradicted by the record and had no factual support. Thus, it was given little or no weight. As to the second point the Board made clear that the Board could not have misapprehended or overlooked evidence or argument that was not discussed meaningfully in the Petition. Order at 4. The Board will not hear, in a Motion for Rehearing, arguments and evidence that were not before it in the subject motion.

Wowza Media Sys. et al. v. Adoby Sys. Inc., IPR2013-00054 (Paper 16). Regarding the Board’s finding that the Petition was non-compliant, Petitioner first asked that the Board to merely consider the petition as incomplete, under 37 CFR § 42.106(a)(1). The Board stated that Petitioner’s motion confused the minimum statutory requirements to receive a filing date with the requirement that a petition prove unpatentability by a preponderance of the evidence. The latter failure was a deficiency in a substantive, not procedural, requirement of the petition. Order at 3.

Synopsys, Inc. v. Mentor Graphics Corp., IPR2013-00041 (Paper 21). Petitioner argued that the Board failed to apply the broadest reasonable construction to a key claim limitation. The Board noted, at threshold, that Petitioner did not set forth its own proposed interpretation of that claim limitation, thus the matter was not discussed in the petition. Using now familiar terminology, the Board held that it could not have misapprehended or overlooked something not adequately explained in the initial petition. The Board did go on to explain why the decision was correct, in any event.

Denso Corp. v. Beacon Navigation GmbH, IPR2013-00027 (Paper 16). The Board’s decision was based on the fact that the “Petition set forth ‘argument’ in the form of claim charts that merely pointed to various portions of the reference with no narrative explaining how the referenced portions meet the limitations of the claims.” Order at 2. In response to the Rehearing Request, the Board found that there was no indication of where the arguments were previously presented. Order at 3. Despite this fact, the Board did consider Petitioner’s arguments, but found them unpersuasive.

Sata GmbH & Co. KG v. Anest Iwata Corp., IPR2013-00111 (Paper 17). The Board ruled that it had not misapprehended the inherency argument made by Petitioner in denying certain challenge grounds. Further, the Board disagreed that Petitioner’s expert testimony must be accepted as true. Petitioner’s expert did not refer to sufficient facts or point to objective evidence to support his conclusions and, as such, it was entitled to little weight. Order at 4.

On Order Denying Motion to Submit Supplemental Information

Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106 (Paper 35). Movant argued that motion should have been granted because it was within regulatory due date for such motions to submit supplemental information. The Board disagreed, finding that movant had not complied with the underlying requirements of a motion to supplement. Specifically, (1) what was deemed an intentional delay to provide relevant information was contrary to the efficient administration of the Office (Order at 4-5); (2) the supplemental information went beyond what is relevant to a claim for which trial has been instituted – the relevant standard for a motion to supplement (Order at 5-9); (3) the motion did not comport with due process (Order at 9-11). Thus, the Board’s decision was deemed not to be an abuse of discretion and the motion for rehearing was denied.

On Order Expunging Non-Compliant Papers

CBS Interactive, Inc., et al. v. Helferich Patent Licensing, LLC et al., IPR2013-00033 (Paper 84). Movant/Patent Owner requested rehearing of order expunging non-compliant papers. The Board first noted that the Director promulgated 37 CFR § 42.12 to provide that the Board may impose a sanction for failing to comply with an applicable rule. The Board had previously denied a motion to add supplemental evidence, but Patent Owner filed a motion for rehearing that included the three exhibits at issue that amounted to an unauthorized motion to supplement. This was just the latest in many missteps by Patent Owner and the Board, clearly, has had enough.

Board Grants Motion for Rehearing

Illumina v. Trustees of Columbia Univ. in the City of NY, IPR2012-00006 (Paper 43). In the only granted request for rehearing, the Board agreed that it erred in not authorizing the IPR trial on certain claims based on certain prior art. The issue related to whether a prior art reference properly incorporated another piece of prior art by reference. The Board agreed that, in coming to its conclusion, it did not use the correct standard (one of ordinary skill). Instead, the Board required a heightened standard that would require the exact word at issue. It is worth noting that the Board also considered an objection relating to the Board’s rejection of duplicative challenges to the claims. Given the Board’s mandate for “just, speedy, and inexpensive resolution of every proceeding,” the Board found that it did not abuse its discretion in denying the duplicative grounds.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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