The PTAB rarely grants a request for rehearing on its decision to deny institution of a covered business method (CBM) or inter partes review (IPR). It is common for petitioners to request such rehearings, but exceedingly rare for the Board to grant them. The case of Milwaukee Electric Tool Corp. v. Irwin Industrial Tool Co., case IPR2015-01462, (January 15, 2016) illustrates just how difficult it is to convince the PTAB to change their mind.
In Milwaukee Tool, the PTAB relented on its earlier decision to deny the inter partes review of certain claims of a patent directed to a hole cutter due to a typographical error in the original petition. Specifically, Milwaukee Tool petitioned for rehearing because the Petition included "a typo[graphical error] in the heading [that] might have caused the Board to overlook claims 21-30 in Ground 2 of the Petition."
The Board went a step further by instituting the IPR for the inadvertently overlooked claims: "we are also persuaded that Petitioner has established a reasonable likelihood of prevailing in its challenge of claims 21-30 under Ground 2."
Takeaway
As noted above, the Board rarely grants such Petitions on substantive grounds, and appears to have granted this Petition because it entirely overlooked the claims being challenged. In fact, granting such Petitions is so rare that the docket listing identified the order as a Decision Denying Rehearing, perhaps out of habit. This is also a rare case of the PTAB forgiving a petitioner for a typographical error or failure to follow the strict procedures set forth in the federal rules or Patent Trial Practice Guide.
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