The Software IP Report

PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

By George Schooff

Categories: The Software IP Report, USPTO Post-Issue Proceedings

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on its earlier decision denying institution of inter partes review.

In AVX, Petitioner sought inter partes review of claims 1-20 of U.S. Patent No. 7,327,553.  The Board denied the petition in all respects.  The Petitioner filed a Request for Rehearing.  A request for rehearing “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.” 37 C.F.R. § 42.71(d).  “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).

Each of the ‘553 patent’s claims required a “laminar delamination gap.”  In the decision denying institution, the Board denied both the Petitioner and Patent Owner’s proposed constructions of the term, construing it to mean “a very thin space between layers of material allowing passage of helium gas to the outer edges of the capacitor.” AVX, Paper 13 at 2-3.  With that, the Board denied the petition, concluding that the only art Petitioner cited as disclosing the claimed “laminar delamination gap” didn’t disclose that limitation as construed. Id. at 3-4.

In its Rehearing Request, Petitioner asserted that the Board overlooked evidence in its petition that the cited art did indeed include the limitation as construed.  The Board agreed, though noting, “Petitioner’s arguments were not presented in the Petition with great clarity or precision.” Id. at 7, note 3.  In fact, one Judge dissented from the decision asserting Petitioner’s argument was presented in its Rehearing Request for the first time. Id. at 3 (Roesel, J., dissenting).

The AVX decision suggests that the Board granting Requests for Rehearing – especially from decisions denying institution of inter partes review – will remain the rare exception.  But if the Petitioner can point to evidence presented in the Petition supporting institution of inter partes review that the Board overlooked, at least some hope remains.