AOL Inc v. Coho Licensing LLC, Case IPR2014-00771 (March 24, 2015) (Paper 12)

Takeaway (1): A request for rehearing is not an opportunity to expand on evidence and arguments not presented, or to mend gaps in the evidence originally presented. Requests for rehearing are limited to evidence and arguments originally presented.

Takeaway (2): Parties are not permitted to request an expanded panel. The Chief Judge may expand a panel on a “suggestion” from a judge or panel in appropriate circumstances, such as when a panel decision conflicts with a Federal Circuit or Supreme Court decision or where there are contrary legal interpretations of a statute or regulation. Disagreement among the judges on a panel concerning the facts or evidence presented in a particular case is, by itself, is not a reason to expand the panel.

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Takeaway (1):

A request for rehearing is not an opportunity to expand on evidence and arguments not presented, or to mend gaps in the evidence originally presented. Requests for rehearing are limited to evidence and arguments originally presented.

Takeaway (2):

Parties are not permitted to request an expanded panel. The Chief Judge may expand a panel on a “suggestion” from a judge or panel in appropriate circumstances, such as when a panel decision conflicts with a Federal Circuit or Supreme Court decision or where there are contrary legal interpretations of a statute or regulation. Disagreement among the judges on a panel concerning the facts or evidence presented in a particular case is, by itself, is not a reason to expand the panel. Continue reading “AOL Inc v. Coho Licensing LLC, Case IPR2014-00771 (March 24, 2015) (Paper 12)”

Conopco Inc v. The Procter & Gamble Co., Case IPR2014-00506 (Dec. 10, 2014) (Paper 25)

Takeaway (1): The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. In determining whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board can consider whether any prior art or arguments raised in the petition at issue were known or available to the petitioner at the time of filing 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.

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Takeaway (1):

The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. In determining whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board can consider whether any prior art or arguments raised in the petition at issue were known or available to the petitioner at the time of filing 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. Continue reading “Conopco Inc v. The Procter & Gamble Co., Case IPR2014-00506 (Dec. 10, 2014) (Paper 25)”