Although parties continue to file Requests for Rehearing of the PTAB’s Final Written Decision, none have yet succeeded in changing the outcome. According to Docket Navigator (www.docketnavigator.com), to date, 19 motions for rehearing of the Final Written Decision have been filed. Only one, in McLinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR 2013-00231, has been granted. Unfortunately for the patent owner in that case, although the request for rehearing was granted and the Board agreed to reconsider its Final Decision, it ultimately declined to make any modification.
A request for rehearing is essentially a motion to reconsider and the Board will not hold a formal rehearing even if the motion is requested. The Board’s recent June 25, 2015 denial of a Request for Rehearing in Bank of America, et al v. Intellectual Ventures I LLC, CBM 2014-0030 provides an example of the Board’s general response to these motions. In response to the argument that the Board overlooked or misapprehended an argument, the Board responded that it considered all arguments presented but was not persuaded. Similarly, when presented with an attempt to reargue a point already considered, the Board cited to the discussion on that issue in its Final Decision. When presented with new citations and explanations not previously cited, the Board refused to consider the new evidence stating that it could not have overlooked them if they were not previously presented. When asked to reconsider the weight that it assigned to testimony offered by witnesses, the Board declined to do so on a motion for rehearing. In other decisions, the Board also declined to allow a Patent Owner to present new arguments in a Request for Rehearing that the Board believed could have been presented in the Patent Owner Response.
While the Board has granted at least a small portion of Motions for Reconsideration or Rehearing of Institution decisions where a party argued that the Board misapplied the law overlooked previously-made arguments, no one has yet found a basis that convinced the Board that its Final Written Decision was incorrect. When making the decision about whether to spend the time and money to file a Request for Rehearing, think long and hard about whether the arguments you are making are something more than a rehash or a missed opportunity.