Topic: Requests for rehearing

General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 thru -01361 (Sept. 9, 2017) (Paper No. 19)

Takeaway (1) (Precedential): The Board has broad discretion to deny “follow-on” petitions under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).  When determining whether to institute follow-on petitions, the Board should consider the seven NVIDIA factors.

Takeaway (2) (Informative): The Chief Judge may expand a panel on a “suggestion” from a judge, panel, or party in a post-grant review. The standard operating procedure (PTAB SOP 1, 3 (§ III.A)) exemplifies some of the reasons why the Chief Judge might decide to expand a panel, for example [t]he proceeding or AIA Review involves an issue of exceptional importance.”

Takeaway (3): 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 by identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply.

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.