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December 6, 2016Newsletter

This Week at the Board - December 6, 2016

PTAB Addresses Proper Way to Seek Review of a Panel Decision in an IPR

In IPR2014-00041, the PTAB, noting that the five cases at issue had been terminated and appeals exhausted, prohibited the parties from requesting a teleconference or filing any further papers regarding the merits of the cases with the Office. 

Following termination of the cases, Petitioner, under 37 C.F.R. § 41.3(b), filed a petition to the Chief Administrative Patent Judge requesting the Board reopen inter partes review. The Board—finding that § 41.3(b) did not cover reopening terminated IPRs—expunged the petition from the record. Petitioner appealed to the Federal Circuit, which dismissed the appeal after concluding it lacked jurisdiction to review the panel’s decision. Petitioner next filed a petition for a writ of certiorari to the Supreme Court, which was ultimately denied. Finally, Petitioner submitted a petition under 37 C.F.R. §§ 1.181-1.183 in an attempt to invoke the supervisory authority of the Director. The Board found that those regulations did not provide for a panel decision of an IPR. In so doing, it noted that the proper way to seek review of a panel decision in an IPR is to file a timely request for rehearing under 37 C.F.R. § 42.71(c).

A link to the PTAB’s order is provided here.

 

PTAB Grants Petitioner’s Request for Rehearing of a Final Decision

In IPR2015-00709, the Board granted Petitioner’s request for rehearing of its Final Decision and modified the Final Decision after concluding the remaining claim at issue was unpatentable as obvious. Petitioners had challenged the Board’s earlier decision that it had failed to meet its burden to show that the claim would have been obvious in view of the prior art. 37 C.F.R. § 42.71(c) governs the review of a Final Decision. Section 42.71(c) provides that any such request “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.” Petitioner argued that the Board’s determination was based on a misapprehension of what was required by the claim. After considering Petitioner’s arguments, the Board agreed and overturned its earlier decision.

A link to the PTAB’s order is provided here.

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