The Patent Trial and Appeal Board (PTAB) recently granted a rare request for rehearing in an inter partes review.  See Shopify, Inc. et al. v. DDR Holdings, LLC, IPR2018-01012, Paper 35 (Oct. 26, 2020). Shopify had challenged DDR Holding's U.S. Patent No. 9,043,228. In a mixed Final Written Decision (FWD), the PTAB initially found claims 1, 3, 7-9, 11, 15, and 16 obvious over the cited prior art. Administrative Patent Judge DeFranco dissented from the FWD on the basis that he would have also found claims 4, 5, 12, and 13 unpatentable over the prior art. Upon Shopify's request for rehearing, the PTAB further considered the record regarding claims 4, 5, 12, and 13, and in its Decision Granting Petitioner's Request on Rehearing (Rehearing Grant), the PTAB reversed that portion of the FWD and found claims 4, 5, 12, and 13 obvious in view of the prior art.

A request for rehearing requires the party challenging the FWD to identify all matters the party believes the Board to have “misapprehended or overlooked” and the place on the record “where each matter was previously addressed in a motion, opposition, or reply.” 37 C.F.R. § 42.71(d). The party challenging the FWD has the burden to show that the FWD should be modified. Id.

Shopify's request for rehearing focused on claim 4. Claim 4 depends from independent claim 1, which had been found obvious over the prior art in the FWD. In its Request for Rehearing, Shopify argued that one of the cited prior art references rendered obvious the additional features recited in claim 4. Specifically, Shopify argued that the PTAB had misapprehended or overlooked Shopify's arguments regarding claim 4 by “providing a reference to where it [was] made in the original Petition, as well as supporting evidence that include[d] testimony by [Shopify's expert].” Rehearing Grant at 5.

The PTAB found Shopify's citations and support sufficient to grant rehearing, and upon reconsidering the record, found that Shopify's arguments regarding claim 4 were unrebutted. The Board made similar findings for claim 5, which depends from claim 4, and for claims 12 and 13, which include “limitations that generally parallel the limitations recited in claims 4 and 5.” Rehearing Grant at 7.

Concluding that Shopify's burdens were satisfied, the Board found in favor of Shopify's request for rehearing. Thus, the Board found that all of claims 1, 3-5, 7-9, 11-13, 15, and 16 of DDR Holding's patent were unpatentable as obvious over the prior art.

Originally Published by Finnegan, November 2020

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