Topic: Archived Decisions

Takeaway (1): The Board has broad discretion to deny “follow-on” petitions. In deciding whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board should consider whether prior art or argument raised in the follow-on petition was known or available to the petitioner at the time it filed the first petition.
Takeaway (2): When considering a request for rehearing, the Board reviews its decision for an abuse of discretion, which may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. The party requesting rehearing bears the burden of showing that the decision should be modified, and “ʻ[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.’”
Takeaway (3): The members of the Board deciding an institution matter are not empowered to grant a request for panel expansion.

Takeaway: The Board has broad discretion to deny “follow-on” petitions.

Takeaway (1): The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of IPR proceedings to which the petitioner was a real-party-in-interest).
Takeaway (2): A petitioner asserting that a combination of prior art renders a claim obvious must explain the reason(s) why a person of ordinary skill in the art at the time of the invention would have modified one of the references to include the relevant aspects of the other(s). Simply pointing out that the references deal with similar features or devices is insufficient.

Takeaway: In a motion to amend claims in IPR proceedings, a patent owner must adequately demonstrate the patentability of any proposed substitute claim over the prior art in general, and, as such, the patent owner should discuss, as well as present evidence, if appropriate, as to the level of ordinary skill in the art and what was known regarding the features being relied upon to demonstrate patentability of the proposed claims.

Takeaway: Non-lead counsel may be admitted pro hac vice upon showing of good cause and that the counsel is an experienced litigating attorney with an established familiarity with the subject matter at issue in the proceeding.