Takeaway: An attempt to supplement unpatentability reasoning not set forth in the petition is not a basis for granting a request for rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution of post-grant review. In the Board’s Institution Decision, the Board granted the Petition and initiated post-grant review as to certain claims of the ‘292 patent, but denied the Petition as to other claims.

The Board reviews the decision for an abuse of discretion. In its prior decision, the Board denied institution of post-grant review of certain claims because Petitioner “had failed to provide sufficiently articulated reasoning with rational underpinning to support the combination of Ford, Hamilton, Neptune, and Mish.” In its Rehearing Request, Petitioner argues that the Board “did not apply the proper standard for assessing whether one of ordinary skill in the art would have looked to Mish for solving the problem addressed in claim 10” and that the Board “overlooked the motivation to combine and the rationale for combining the teachings of Mish and Hamilton with Ford.”

The Board disagreed, finding that “Petitioner’s Request largely relies on new arguments and citations to Mish that were not presented in the Petition.” Thus, “Petitioner’s new analysis will not be considered because it is raised impermissibly for the first time in the Rehearing Request.” Petitioner’s previous “cursory analysis and bare citations may gesture in the general direction that the Rehearing Request now argues so vehemently,” but “we are not persuaded we erred in determining that the Petition failed to establish that it was more likely than not that Petitioner would succeed on this ground.” Thus, “Petitioner’s belated attempt to supplement its inadequate reasoning is not a basis for granting a request for rehearing.”

Core Survival, Inc. v. S&S Precision, LLC, PGR2015-00022
Paper 15: Decision Denying Petitioner’s Request for Rehearing
Dated: April 8, 2016
Patents: 8,882,292 B2
Before: Beverly M. Bunting, Kevin W. Cherry, and Charles J. Boudreau
Written by: Cherry