United States: Requesting A Motion For Reconsideration/Rehearing At The PTAB? What You Need To Know

New post-grant proceedings at the Patent Trial and Appeal Board ("PTAB" or the "Board") provide an accelerated forum to challenge patentability at the United States Patent and Trademark Office ("USPTO"). Within these proceedings, the Board makes decisions that initiate and determine the scope of the post-grant challenge and, similar to traditional district court proceedings, decisions that manage discovery and determine the overall outcome. Whether it is a ruling on the institution of a proceeding, a discovery order, a final decision, or otherwise, any aggrieved party may request reconsideration through a rehearing on any decision made by the Board. However, the party requesting reconsideration must clearly point out the Board's error and provide direct support for its position from its original submission to the Board. For these reasons, motions for reconsideration are almost always denied.

Standard of Review

Under 37 CFR § 42.71(c), "[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion." While not explicitly stated in the regulations, the Board in practice has extended this standard to other motions for reconsideration, regardless of cause.1 The abuse of discretion standard of review is the same heightened standard federal appeals courts use to review district court factual findings.2

Further, pursuant to 37 CFR § 42.71(d), "[t]he 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."3 In practice, the Board strictly adheres to these requirements. Thus, a motion for reconsideration that does not explicitly direct the Board to a citation in a prior filing by the party may be rejected even if that matter was in fact previously argued to the Board.4

Requests for rehearing must occur (i) within 14 days of the entry of a decision on the institution of a proceeding or a non-final decision of any kind or (ii) within 30 days of the entry of a final decision or a denial of institution of a proceeding.5

Reconsideration/Rehearing Practice to Date

A request for reconsideration/rehearing is equivalent to a "motion to reconsider" in the federal district courts; the decision on the reconsideration itself is the "rehearing," as no formal rehearing is conducted. In other words, the Board's granting of a motion provides the requested relief without further argument from the parties.6 Typically, in its written decision, the Board will outline each argument presented in the Request, address the arguments with specificity, and provide reasoning for either granting or denying based on the evidence brought to its attention in the Request.

Due to the infancy of the new post-grant proceedings, the vast majority of requests for reconsideration filed with the Board have concerned the grant or denial of the institution of the proceeding or the proceeding's scope (i.e., which particular claims or references from the original petition will be reviewed). Of the approximately 2007 requests for rehearing decided as of the date of this writing, only 10 have been granted, and seven of these have granted only partial relief. This is roughly a 5 percent success rate for all motions. Of the requests related to the initial institution decision, only 3.5 percent (six of 169) have been successful. To date, the Board has not granted reconsideration of a final written decision.

Successful Motions for Reconsideration/Rehearing

Winning motions for reconsideration/rehearing have presented the Board with clear guidance as to how the Board misapplied the law, overlooked previously argued material facts, or made inadvertent errors in its ruling. Presenting new arguments or merely re-arguing the position a party presented in the prior submission will not persuade the Board. Further, to date, the Board has granted only motions on institution decisions that have demonstrated the previous order was clearly wrong in some respect.8 The following are examples of successful requests for reconsideration/rehearing of institution decisions by the Board.

Misapplication of Law. In PNY Techs., the Board originally granted inter partes review of nine claims of the patent at issue.9 The patent owner successfully argued that with respect to one ground for institution, the Board misapplied the law.10 Specifically, the patent owner argued that the Board's decision—stating that it was "conceivable that the processes of [the alleged anticipatory reference] could create an indent with no curvature" and that "logic and physics dictate" some curvature would occur in die-pressed materials—"illustrate[d] 'a lack of inherency under the proper Federal Circuit standard.'"11 The Board reviewed the inherency standard, agreed it was misapplied in this instance, and removed anticipation as a ground for the inter partes review.

Overlooking Previous Arguments. In Illumina Inc. v. The Trustees of Columbia Univ. in the City of New York, the Board originally denied inter partes review of a patent claim based on the rejection of an alleged anticipatory reference.12 The petitioner successfully pointed out that a passage from the reference, which it had cited in its petition, incorporated by reference a publication that disclosed deazapurine as the base of a nucleotide.13 The Board admitted that it overlooked the particular citation when denying review, agreed that the passage supported incorporation by reference of the relevant subject matter, and authorized inter partes review of the claim.14

Other Obvious Errors. In Facebook, Inc. v. Software Rights Archive, LLC, the petitioners requested that the Board institute inter partes review on other claims and further to add an additional reference as grounds for institution.15 In support, it noted that the Board had found in their favor in the body of the decision but had inadvertently left the claims and reference out of its order.16 The Board agreed that it had inadvertently omitted the reference and that the omission of the claim was a typographical error.17

Practice Tips

A party that believes the Board erred in a decision has the statutory right to ask for reconsideration. But, an aggrieved party should temper its expectations for any reversal. Like any deliberative body, the Board is hesitant to reverse itself unless a party can show clear, unmistakable error.

This does not mean that reconsideration should not be attempted where the Board has issued an adverse ruling on an important matter and meritorious arguments exist. At the very least, requests for reconsideration enable the party to further argue its position and require the Board to examine the issues further. Based on PTAB practice to date, the following are "best practices" for submitting a successful request for reconsideration/rehearing with the Board:

 

  • Shore up the original brief. A request for reconsideration is only as good as the petition, motion, or brief it cites. Therefore, all potential winning arguments (within the Board's page limits and procedural requirements) should be included in the original document, and all references should be cited properly.
  • Follow all procedural rules precisely. Given the Board's strict adherence to the regulations, any request for reconsideration should follow the requirements of 37 CFR § 42.71(d) to the letter. Provide precise connections between the arguments in the request and the previous record and cogently identify anything the Board misapplied or overlooked.
  • Give the Board a reason to reconsider. An argument that merely rehashes a prior position will likely not be accepted by the Board. If possible, provide a roadmap for the Board to understand the error in a manner that goes beyond the original document and presents the argument in a new light.

Footnotes

1 See, e.g., Conmed Corp. v. Bonutti Skeletal Innovations, LLC, IPR2013-00624, Paper 22 at 3 (Mar. 14, 2014) (In denying motion for rehearing on filing date, the Board cited 37 C.F.R. § 42.71(c) and stated "[w]hen rehearing an interlocutory decision, the Board reviews the decision for an abuse of discretion.").

2 See, e.g., PNY Techs. Inc. v. Phison Elecs. Corp., IPR2013-00472, Paper 16 at 2 (Apr. 23, 2014) ("An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.") (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)).

3 37 CFR § 42.71(d).

4 See, e.g., A.C. Dispensing Equip. Inc. v. Prince Castle LLC, IPR2014-00511, Paper 16 at 5-6 (Sep. 10, 2014) ("Petitioner should not expect the Board to search the record and piece together the evidence necessary to support Petitioner's arguments."); Purdue Pharma L.P. v. Depomed, Inc., IPR2014-00377, Paper 17 at 5-6 (Aug. 6, 2014) ("It is not the Board's role to play archeologist to uncover any additional support in the record that is not raised and discussed in the Petition and that may bolster [the expert's] opinion.").

5 37 CFR § 42.71(d)(1)-(2).

6 But see Facebook v. Rembrandt Social Media LP, IPR2014-00415, Paper 14 at 3 (July 31, 2014) (granting rehearing on the institution of the proceeding, but denying the requested relief regarding the filing date); Aker Biomarine AS v. Neptune Techs, IPR2014-00003, Paper 45 at 10 (granting rehearing on denial of institution to further explain the Board's reasoning and to add additional grounds for denial).

7 This number does not include decisions by the Board granted on identical or near-identical grounds for separate post-grant proceedings on different but related patents (i.e., instances where a Board decision is effective across multiple proceedings).

8 This standard may be somewhat relaxed in requests for reconsideration/rehearing involving discovery issues, as the Board may be more receptive to the procedural developments of the particular case. See, e.g., Corning Inc. v. DSM IP Assets B.V., IPR2013-0043, Paper 36 at 5 (July 16, 2013) (granting patent owner limited leeway to ask questions regarding redacted material after expedited rehearing request); Id., IPR2013-00043, Paper 55 at 3 (Nov. 1, 2013) (granting petitioner, in 10 related cases, discovery as to four limited categories of documents); K-40 Elecs., LLC v. Escort, Inc., IPR2013-00203, Paper 36 at 3-4 (May 30, 2014) (granting petitioner the ability to submit and rely upon video record of deposition where deponent was to present live testimony).

9 IPR2013-00472, Paper 16 (Apr. 23, 2014).

10 Id.

11 Id. at 3.

12 Id., IPR2013-00011, Paper 44 at 2 (May 10, 2013).

13 Id. at 6-9.

14 Id. at 9; see also Veeam Software Corp. v. Symantec Corp., IPR2013-00142, Paper 17 at 2-3 (Sept. 30, 2013) (granting patent owner's request for reconsideration of institution on certain grounds because the Board overlooked patent owner's argument in its preliminary response that the cited reference did not disclose a "restoration server" as required in the claims).

15 Id., IPR2013-00478, Paper 31 at 2 (Apr. 14, 2014).

16 Id. at 3.

17 Id. at 3-5; see also Microsoft Corp. v. Virnetx Inc., IPR2014-00614, Paper 12 (Oct. 30, 2014) (granting institution of additional grounds of unpatentability because it was "'an inadvertent transcription error, rather than a deliberate omission.'")

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Duane Morris LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Duane Morris LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions