for Rehearing May Backfire on Patentees
As detailed earlier this week, a patentee's decision to
file a preliminary response in an IPR/CBM preliminary proceeding is not
as straightforward as one would expect. Where such a preliminary response
is imprudently pursued by a patentee this misstep can be further compounded by
other optional filings post-Trial Order.
Subsequent to the filing of a preliminary response by a
patentee the Patent Trial & Appeal Board (PTAB) will issue its decision. If
unsatisfied with the Trial Order either party may file a Request for Rehearing
as a matter of right within 14 days.
As is the case with the optional patentee preliminary
response, just because you can request rehearing doesn't mean you
The decision whether or not to institute trial is final
and non-appealable. However, a PTAB Trial Order may be reconsidered under an
abuse of discretion standard 42.71(c). In order to overturn all or part of a
Trial Order the challenging party has the burden of demonstrating that the
Board misapprehended or overlooked an aspect of the record.
In all but the most exceptional of circumstances the
PTAB, like most courts, rarely finds an abuse of discretion warranting a change
in course from an initial decision. Yet, some patentees take the "what do I
have to lose" approach without appreciating they have much to lose.
First many such requests fail to appreciate the
heightened standards and the need to identify a mistake in the record. Instead,
many requests will argue that the "mistake" was the ultimate conclusion of the
Board and attempt to present altogether new arguments to the record. Such a
filing is not only a complete waste of time but will undermine your credibility
with the panel conducting your trial.
Further, for patentees, such requests almost always
follow failed preliminary responses. Here the inclusion of new arguments in the
request for rehearing only serves to put your adversary on notice of your
entire case. Providing advance notice of your forthcoming patentee response,
and discovery plan (assuming the petitioner declarant is to be deposed a few
weeks later, which is typical) is just not something you should be doing given
the odds of success. To date, all of such requests have been denied.
On the Petitioner side, a request for rehearing may be
less of a strategic concern. This is because a petitioner may not have any
other option to file a second petition for claims of the patent if the 12 month
window is closed. Likewise, there is less of a concern of disclosing as yet
unknown positions (i.e., the petition should have provided such in the first
instance). Even if denied, the claims addressed in the petitioner Request will
not be part of the trial proceeding.
To date petitioners have experienced more success with
their requests for rehearing, however this is just a temporary
statistical anomaly. Historically speaking, the PTAB has very rarely
reversed course upon request for rehearing.
View more from Patents Post-Grant.
For more information about LexisNexis
products and solutions connect with us through our corporate site.