On April 4, 2019, the PTAB designated as precedential its decision in Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, Case IPR2018-00816 (PTAB Jan. 8, 2019) (Paper 19), which provides additional insight on the Trial Practice Guide's good cause standard for submitting new evidence on rehearing. Specifically, the PTAB explained that "[i]deally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue 'good cause' exists for admitting the new evidence. Alternatively, a party may argue 'good cause' exists in the rehearing request itself."

In this case, Huawei's Petition for IPR was denied institution and, as part of Huawei's rehearing request, they submitted three new exhibits, Exhibit 1039-1041. Relying on the "good cause" standard mentioned in the PTAB's Trial Practice Guide, the panel concluded that because "Huawei did not request a conference call with the Board prior to submitting Exhibits 1039–1041 with its Request for Rehearing ... , [n]or did Huawei explain why these exhibits should be admitted in the Request for Rehearing itself," Exhibits 1039-1041 are not entitled to consideration and should be expunged from the record.

Going forward, we recommend that parties seeking to submit new evidence as part of a request for rehearing should, despite its optional nature, request a conference call with their panel to explain why good cause exists. And, overall, we expect that requests to enter new evidence on rehearing will be rarely granted.

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