Takeaway: If a party can show that the Board overlooked an argument or did not give proper weight to certain facts, the Board may grant a request for rehearing. 

In its Decision, the Board granted-in-part Petitioner’s Request for Rehearing the denial of institution, and the Board granted institution of inter partes review of the ’507 Patent.  The Board began by stating that when considering a request for rehearing, the Board reviews the decision for abuse of discretion.  An abuse of discretion may arise if there has been an erroneous interpretation of law, a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors.  The party requesting rehearing has the burden of showing that the decision should be modified.

Petitioner stated that with respect to the grounds based on the ’095 Patent and based on Singh, the Decision was based on factual findings that are not supported by substantial evidence and the Board made an unreasonable judgment in weighing relevant factors.  Further, Petitioner argued that as to the challenges based on Singh, the Board also made an erroneous claim interpretation.

The Board first discussed ground 1––anticipation of claims 58-60, 67, 69, 71, and 72 by the ’095 Patent.  Petitioner contended that the Decision declining to institute trial o this ground was based improperly on the potential concerns with an experiment described in the Miura Declaration, and the Board failed to appreciate that the process of the ’095 Patent and the teachings of the ’507 Patent alone demonstrate that DME is necessarily produced in the process of the ’095 patent and practices the limitation of claim 58.  Petitioner stated that the Petition primarily relies upon the Cooper Declaration, rather than the Miura Declaration, which was secondary.  The Decision gave little weight to the Cooper Declaration because it was based on an unsupported assumption and the results of the experiment, for which Petitioner had not provided sufficient evidence.  The Board agreed that it misapprehended the significance of the Cooper opinion, and overlooked the fact that the opinion is also based on his own calculation and data in two published articles.  Therefore, the Board determined that there is a reasonable likelihood that Petitioner would prevail on this ground, and instituted trial as to this challenge.

The Board then discussed ground 2––obviousness of claims 58-60, 67, and 69 over Singh.  Petitioner argued that the Decision was based on an overly narrow interpretation of claim 58.  The Board stated that it did not include an express construction of any claim terms and agrees with Petitioner’s interpretation of the claim, but does not agree that Singh discloses the required limitations of claim 58.  Therefore, the Board denied Petitioner’s Request.

The Board next addressed ground 3––obviousness of claims 58-60, 67, 69, 71, and 72 over Singh, the ’095 Patent, and Akinori.  Petitioner’s argument as to this claim is the same as grounds 1 and 2 above.  Because Petitioner did not articulate a difference between challenge 1 and challenge 3, the Board exercised its discretion to decline to institute review on this ground.

Finally, the Board reviewed ground 4––obviousness of claims 71-73 over Singh, the ’095 Patent, Akinori, and JP ’712.  Petitioner again asserted the same arguments as for grounds 1 and 2.  Regarding claims 71-72, which relies on JP ’712, the Board found that Petitioner had not articulated a substantive difference between this obviousness challenge and the anticipation challenge, therefore, the Board exercised its discretion not to institute trial.  Claim 73 is only challenged under this ground, and the Board determined that Petitioner established a reasonable likelihood of prevailing on this ground.

Daicel Corporation v. Celanese International Corporation, IPR2015-00173
Paper 15: Decision on Request for Rehearing D
ated: June 26, 2015
Patent 8,076,507 B2
Before: Linda M. Gaudette, Christopher L. Crumbley, and Jon B. Tornquish
Written by: Gaudette