As parties to inter partes review proceedings (and the PTAB for that matter) have felt their way through the first year of IPR proceedings, there have been ample disappointments and, therefore, related Motions for Rehearing. Indeed, there have been many such motions, and so this article is just Part I of a summary of rehearing decisions, with an eye toward identifying trends and best practices in this type of motion practice.

At threshold, the regulatory basis for Motions for Rehearing is found in 37 CFR § 42.71(d):

“37 CFR § 42.71(d): A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. A request for rehearing does not toll times for taking action. Any request must be filed: (1) Within 14 days of the entry of a non-final decision or a decision to institute trial as to at least one ground of unpatentability asserted in the petition; or (2) Within 30 days of the entry of a final decision or a decision not to institute a trial.

To date, numerous Motions for Hearing have been requested, but only rarely have such motions been granted. Through the 1 year anniversary of IPR practice, Motions for Rehearing suffered through a 10% grant rate (1 out of 10). That percentage is only decreasing. Thus, to get a better handle on what worked, and what has not, we set forth the below synopsis of numerous such motions.

In general, however, the lessons to be taken from these rulings include that, if the Board truly missed an argument, it is willing to own up to that mistake and reconsider the argument. There is no basis, however, for making new arguments or presenting new evidence in the form of a Motion for Rehearing. This is against the rules and, to emphasize the point, the Board has, on many occasions, denied Motions for Rehearing based on the simple ground that it could not have overlooked or misapprehended an argument or evidence that was not presented to it in the underlying briefing. The Board will simply not consider belated or new arguments/evidence in a Motion for Rehearing. To overcome this hurdle to rehearing practice, specifically identify for the Board where, in the underlying briefing, the argument was previously presented.

Turning to the actual decisions, we note that this article only relates to Motions filed in response to an order instituting an IPR trial. All other orders will be discussed in a later article.

On Order Instituting Inter Partes Review Trial

By Petitioner:

Hewlett-Packard Co. v. Technology Properties Ltd., LLC, IPR2013-00217 (Paper 21). Petitioner sought rehearing of Board’s decision instituting IPR trial relating to the effective filing date of the patent-at-issue. To that end, in the Motion for Rehearing, Movant argued that there are three reasons why the Board erred regarding the effective date of the patent. But Movant also admitted that such arguments were not contained in the Petition. The Board declined to consider, for the first time, Movant’s arguments that were presented in the Motion for Rehearing. Order at 3.

SAP America, Inc. v. Pi-Net Int’l, Inc., IPR2013-00194 (Paper 22). Petitioner sought rehearing on a ground on which the Board did not grant trial. At threshold, Patent Owner filed a response to the Motion for Rehearing, but had not first obtained authorization to do so. As such, the Board did not consider that opposition. Turning to the merits, the Board found that, for the first time in the Motion for Rehearing, Petitioner made an argument relating to the denied ground. The Board will not consider such belated arguments. Order at 3.

Scentair Tech., Inc. v. Prolitec, Inc., 2013-00179 (Paper 18). Petitioner sought rehearing of grounds that were merely discarded as redundant to other grounds in the Petition. The Board did not see the potential prejudice identified by Movant. Any discarded grounds could be brought up anew in response to any amended claims in the context of such a motion. Further, though Petitioner may not ultimately prevail on the grounds instituted does not mean it was an abuse of discretion not to have instituted on the additional grounds. To avoid a finding of redundancy, “a petitioner must articulate a meaningful distinction in terms of relative strengths and weaknesses with respect to application of the prior art reference disclosures to one or more claim limitations.” Order at 3.

ABB, Inc. v. ROY-G-BIV Corp., IPR 2013-00062 (Paper 28) and IPR2013-00074 (Paper 22). Petitioner sought rehearing of the Board’s decision to initiate because, Petitioner argued, the decision adopted an erroneous interpretation and because review should have been instituted on one of the denied references. Regarding the claim construction argument, Petitioner sought to supplement its argument in its petition. This new argument was, of course, deemed improper material for a motion for rehearing. Order at 3-4.

Motorola Solutions, Inc. v. Mobile Scanning Tech., LLC, IPR2013-00093 (Paper 34). Petitioner argued that some structure identified by the Board as corresponding to a means-plus-function limitation was not actually necessary to perform the recited function. Petitioner also sought inclusion of one ground that had been denied in the decision to initiate. The Board engaged in a detailed analysis supporting its earlier decision before denying the motion for rehearing.

Microstrategy, Inc. v. Zillow, Inc., IPR2013-00034 (Paper 23). Petitioner requested rehearing of the Board’s decision to initiate an IPR, arguing that eight claims that were left out of the trial should have been included. The Board had denied placing those eight claims in the trial because the claim chart contained in the petition did not have evidence relating to certain limitations of the claims. While Petitioner argued in its Motion for Rehearing that evidence relating to those limitations was elsewhere in the petition, the Board disagreed and denied the Motion for Rehearing.

Berk-Tek LLC v. Belden Tech. Inc., IPR2013-00057 (Paper 21). Petitioner requested rehearing on three grounds that were denied by the Board in its decision. For two of the grounds, the Board found that Petitioner was simply presenting new argument in its Rehearing Request and denied the request for that reason. The third ground, which was denied due to redundancy, the Board found that, because Petitioner did not itself identify the meaningful distinctions between the various grounds, it could not now be heard to explain why certain grounds should not have been excluded as redundant. Order at 5.

Avaya Inc. v. Network-1 Security Solutions, Inc., IPR2013-00071 (Paper 32). Petitioner sought rehearing based on certain challenge grounds that were not included in the trial. Again, the Board found that the arguments presented in the rehearing request were new. To the extent the arguments could have been cobbled together from the Petition, “[i]t is not for the Board to attempt to piece together a petitioner’s position based on other, unrelated arguments in a petition…” Order at 5.

Sony Corp. of Am., el al. v. Network-1 Security Solutions, Inc., IPR2013-00092 (Paper 24). Petitioner asked that a denied challenge ground be reconsidered. The Board again found that the argument presented was newly made in the Rehearing Request and, for that reason, the motion was denied.

By Patent Owner:

Veeam Software Corp. v. Symantec Corp., IPR2013-00150 (Paper 17). Patent Owner sought rehearing based on the fact that the Board should not have granted the trial based on several prior art references. Specifically, Movant argued that the Board had overlooked arguments presented in the Patent Owner Preliminary Response that the prior art of reference failed to disclose each and every limitation of the challenged claims. The board agreed that it overlooked the argument at issue, but denied the motion in any event, finding that the arguments did not cause the Board to reach a different conclusion as to the adequacy of the challenges at issue. Order at 2-3.

Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR 2013-00066 (Paper 23), IPR2013-00038 (Paper 20), and IPR2013-00028 (Paper 27). Patent Owner argued that the Board’s decision to initiate unreasonably construed a key claim term. The Board engaged in a detailed analysis of why it did not misapprehend the relevant term. At the very least, however, Patent Owner now has a clear road map of the Board’s argument to be addressed in its formal response to the petition.

Micron Tech., Inc. v. Board of Trustees of the Univ. of Ill., IPR2013-00006 and -00008. Patent Owner’s motion was based on a purported misconstruction of a product-by-process claim. In a one page opinion, the Board disagreed with Patent Owner’s argument, citing to a Federal Circuit opinion that supported its construction of the relevant claim term.

Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042 (Paper 23). Patent Owner argued that the Board’s decision misapprehended an error in the service of the petition as well as the privity requirement of § 315(b). The Board noted that, for the first time in the Rehearing Request, Patent Owner argued that service is a statutory requirement. Using now-familiar language, the Board stated that it “could not have overlooked or misapprehended this argument because it was not made in the preliminary response.” Order at 3. The Board went on to explain why, even on the merits, this argument fails. Patent Owner’s second ground for rehearing was also newly presented in the Rehearing Request, and also denied. Order at 6.

Berk-Tek LLC v. Belden Tech. Inc., IPR2013-00057 (Paper 22). Patent Owner sought rehearing of the Board’s decision to institute a trial. The Board denied the request, stating that it “did not overlook [Patent Owner’s] argument. Rather, the argument was unpersuasive.” Order at 2. Further, the Board stated that “[m]ere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” Order at 3.

BAE Sys. Information and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175 (Paper 20). In the Board’s decision, it decided that the petition was not time barred because the United States, a party to an earlier litigation, was not a privy with BAE. Patent Owner sought rehearing, but merely presented new arguments and evidence. The Board, therefore, denied the request. The Board went onto consider the new evidence and argument, but found that, even in light of the new material, the U.S. and BAE were not privies.Order at 3-4.

More decisions on Motions for Rehearing to come …