Conventional wisdom endorses the view that petitioning for a
rehearing of a Patent Trial and Appeal Board ("Board")
final written decision is a waste of both attorney and client
resources (i.e., time and money). Does WesternGeco, L.L.C. v. PGS Geophysical
AS,1 representing a rare "win" for a
petitioner in a rehearing of an inter partes review
("IPR") final written decision, suggest we should begin
to rethink that conventional wisdom?
Overall, success in an IPR rehearing- defined as the Board
agreeing it has erred and modifying its final written decision is
rare. Success is rare because: 1) requests for rehearing are
rarely made, 2) such requests are even more rarely granted, and 3)
the Board infrequently finds for the petitioner. The few
successful petitions to-date do have some similar features- the
petitioners were able to point to a clear, specific mistake the
Board made (e.g., the Board misinterpreted or overlooked something
in the record), the grounds for the petition were narrow, (e.g.,
few arguments about few claims), and the petition did not simply
re-hash prior arguments (e.g., assign its disagreement with the
Board's decision as legal "error").
The WesternGeco petition for rehearing successfully followed the
foregoing model.2 The petition pointed to a
specific mistake- noting repeatedly that the Board had "failed
to consider " or "never addressed" WesternGeco's
arguments or evidence, and that it "misinterpreted" or
"misapprehended" the claim at issue. Moreover,
WesternGeco petitioned on narrow grounds- it made two arguments
(one of which the Board did not even reach) about one dependent
claim. The Board ultimately was persuaded that it had
misinterpreted the claim (implicitly adding a temporal element that
the claim did not require), adopted the petitioner's
construction of the claim as the broadest reasonable
interpretation, found the claim then fell within the disclosure of
the prior art, and decided to modify its Final Written Decision to
hold the claim unpatentable.
Despite the petitioner's success in WesternGeco, it should
be noted that even if a petitioner follows a petition format that
has resulted in favorable Board rulings in a rehearing, there is no
certainty that the Board will change its mind. Instead, it
could re-affirm its decision and find any error
harmless3, simply strengthen its position/arguments in
preparation for appeal of the decision to the Federal
Circuit4, or otherwise supplement its analysis to arrive
at the same conclusion5. Any of these results may
end up weakening the arguments made in the petition on any appeal
to the Federal Circuit. Even in the face of the favorable
WesternGeco decision, then, practitioners considering filing for a
rehearing of an IPR decision will still need to carefully evaluate
the appropriateness of their arguments and perform a risk-benefit
analysis before filing.
1 WesternGeco, L.L.C. v. PGS Geophysical AS, No.
IPR2015-00313, 2017 WL 504376 (Patent Tr. & App. Bd. February
2 WesternGeco, L.L.C. v. PGS Geophysical AS, No.
IPR2015-00313, 2016 WL 3617806 (Patent Tr. & App. Bd. July 5,
2016) (Administrative Filing).
3 Captioncall v. Ultratec, Inc. No. IPR2013-00549, 2014
WL2527805 (Patent Tr. & App. Bd. March 5, 2014)
4 Athena Automation Ltd. v. Husky Injection Molding
Systems Ltd., No. IPR2013-00290, 2013 WL 8595976 (Patent Tr. &
App. Bd. October 25, 2013).
5 Biomarin Pharmaceutical, Inc. v. Duke University, No.
IPR2013-00535, 2014 WL 2527797 (Patent Tr. & App. Bd. February
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