Practitioners facing a denied petition for inter partes review might take comfort in knowing that the AIA permits a request for rehearing. However, regulations establish a high hurdle for succeeding on any such request. And the PTAB has strictly applied those regulations to deny nearly every request for rehearing to date.
The rules governing IPRs must "be construed to secure the just, speedy, and inexpensive resolution of every proceeding." Given the need for speedy disposition, the PTAB places the onus on the petitioner to clearly explain their positions in the petition and regularly denies requests for rehearing that merely elaborate on petitioner's original positions or advocate invalidity grounds deemed redundant by the Board. See Schrader-Bridgeport Int'l, Inc. v. Continental Auto. Sys. US, Inc., IPR2012-00014, Paper 15 at 2 (April 10, 2013).
In addition, the petitioner bears "the burden of showing a decision should be modified" and the decision itself is reviewed for an abuse of discretion. In particular, 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." The Board has strictly construed this requirement, finding requests that assert the Board misapprehended the facts insufficient to justify modification of the decision. Indeed, the Board has denied requests to reconsider technical readings of prior art and invalidity arguments, stating such arguments in the petition were unpersuasive, underdeveloped, or lacked adequate support. See Corning Inc. v. DSM IP Assets B.V., IPR2013-00052, Paper 16 (May 28, 2013).
To date, the Board has granted requests for rehearing only to the extent they established the Board misapprehended or misapplied the law. For example, the Board has determined that it erred in applying the law governing incorporation by reference and reversed its decision denying review of claims alleged to be anticipated. Illumina, Inc. v. Columbia Univ., IPR2012-00006, Paper 43 at 2-7 (May 10, 2013).
Though a rehearing is possible, practitioners should take care to fully explain in the petition all grounds of invalidity asserted. Should a request for rehearing prove necessary, those requests that cite a misapplication or misapprehension of the law, rather than those that reargue the facts, are more likely to cause the Board to modify its decision.
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