Rehear Today, Refile Tomorrow: Parties Strategize Board Denial of Grounds

Parties filing post-grant petitions, recognize—if the PTAB denies any of the grounds you seek, the AIA significantly limits your right to appeal. You may not appeal to any higher court. See 35 USC § 314(d).You may file a request for rehearing with the same Board panel. 37 C.F.R. § 42.71. But as can be seen from recent board decisions, the “overlooked or misapprehended” standard for consideration on rehearing looms large when the Board denies key grounds. Rehearing requestors bear the burden and confront a type of abuse of discretion standard. Thus far, the chances for succeeding on rehearing have been slim. 35 U.S.C. § 315(c).

Some parties have used another strategy—filing a second IPR petition on the same patent, perhaps beyond the one-year bar, with an accompanying joinder motion. In Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc. (IPR2013-00584, Paper 16 (Sept. 13, 2013)), the Board granted review on the claims Shaw originally sought, save claim 4. Shaw filed a second IPR petition, and sought to join the two proceedings. The Board granted the request December 31. Indeed, the AIA rules permit—and even encourage—such joinder. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). Thus, some parties seeking institution over denied grounds or claims have explored options beyond filing requests for rehearing. 

To date, the only IPR petitioners that have been even partially successful on requests for rehearing have been three petitions related to Illumina, Inc. v. Columbia Univ., IPR2012-00006, Paper 54 at 2–7 (May 10, 2013), where the Board reversed an error of law. The panel acknowledged that, where two publications are similar but bear different filing dates, “the distinction is a reason to authorize review” because “the Patent Owner may attempt to establish that the invention was conceived prior to the current priority date.”

Many other parties have met with denial. Petitioners should explore all their options when facing denial of key grounds or claims. The following PTAB cases exemplify the recent trend:

• Denying institution and rehearing where there was a question—based on the petition alone—as to the priority date:
  • iOnroad Ltd. V. Mobileye Techs. Ltd., IPR2013-00227, Paper 23 (Oct. 2, 2013)
• Denying request for rehearing on redundant grounds:
  • Berk-Tek LLC v. Belden Techs. Inc., IPR2013-00057, Paper 21 (Mar. 14, 2013)
  • Larose v. Caprola, IPR2013-00120, Paper 20 (July 22, 2013)
  • Microstrategy v. Zillow, IPR2013-00034, Paper 23 (Apr. 22, 2013)
  • Oracle Corp. v. Clouding IP, LLC, IPR2013-00088, Paper 13 (June 13, 2013)
  • Scentair Techs. Inc. v. Prolitec, IPR2013-00180, Paper 18 (Aug. 26, 2013)