Requests for Rehearings are Rarely Granted

Written by Stuart Nelson.

Requests for rehearing of Patent Trial and Appeal Board decisions are rarely granted. Requests for rehearing are authorized under 37 C.F.R 42.71(d), which states:

"A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply."

Thus, the request must identify a matter that was "misapprehended or overlooked" and must also show where that matter was previously addressed in a paper. See 37 C.F.R 42.71(d). Failure to do so can be fatal to a request for rehearing.

For example, in TRW Automotive US v. Magna Electronics, the Board denied a request for rehearing to reconsider claim construction and evidence of obviousness. IPR2014-00251, paper 18 at 2-6. On the issue of claim construction, the Board noted that the identified claim element was not construed in the Petition, and concluded: "[w]e could not have misapprehended or overlooked something that was not presented in the Petition." Id. at 3. On the issue of the evidence of obviousness, the Board explained that it did not overlook the evidence, stating:

"The Board, however, considered the evidence and argument presented in the Petition but did not find it persuasive. Decision 25. Petitioner's argument here is merely disagreement with the Board's findings and conclusions. Such disagreement is not a sufficient basis on which to request rehearing. Nevertheless, we further address Petitioner's evidence and argument."

Id. at 5. While the Board denied the request for rehearing, the Board also addressed the Petitioner's arguments and explained why the Board disagreed on the merits. Id. at 3-6.

In another recent decision, in Facebook v. Rembrandt Social Media, the Board actually did grant a request for rehearing under 37 C.F.R 42.71(d). IPR2014-00415, paper 14 at 2. The issue was whether it was proper to accord February 6, 2014 as the filing date of a Petition mailed "via FedEx after the cut-off time." Id. at 2. In granting the request for rehearing, the Board revised its analysis regarding the filing date but the Board did not change its ultimate decision to accord the petition the February 6, 2014 filing date. Id. at 2-3.

Overall, it is rare for the Board to grant a request for rehearing, and even when a request is granted the ultimate decision may not change. Requests should focus on issues that the Board actually overlooked, that were addressed in an appropriate paper, and that might be ultimately persuasive to the Board. See e.g. IPR2012-00006, paper 43; IPR2014-00159, paper 13; IPR2014-00299, paper 13.