Takeaway: If a request for rehearing by a dissatisfied party does not identify the location in the record where that party previously addressed each matter that it submits for review, the request for rehearing will be denied.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s earlier Decision denying inter partes review of claims 9 and 12-14 of the ‘565 patent.  The Board had already granted institution with respect to claims 1, 5-8, 10, and 11.

With respect to the challenge to claims 12-14 based on MacBain under 35 U.S.C. § 102, the Board rejected Petitioner’s arguments for the same reasons as explained in its earlier Decision.  As for Petitioner’s contentions in the Request for Rehearing relying on a new modified version of MacBain’s Figure 7A, the Board indicated that this information was not raised in the Petition.  The Board also noted that “Petitioner does not identify in the record where these contentions were previously presented.”  Ultimately, the Board concluded that it “could not have overlooked or misapprehended Petitioner’s contentions, as they were not raised in the Petition.”

As for the challenge to claim 9 based on Pugh, Meltzer, Darnell, Hunter, and Carruth under  35 U.S.C. § 103, the Board found that the Request for Rehearing came forward with new evidence that was not presented in the Petition, and that Petitioner did not identify in the record where these contentions were previously presented.  This led the Board to conclude that it could not have overlooked or misapprehended Petitioner’s contentions under 35 U.S.C. § 103, because they were not raised in the Petition in the first place.

Larose Industries, LLC v. Choon’s Design, LLC, IPR2014-00218 
Paper 14: Decision Denying Petitioner’s Request for Rehearing 
Dated: June 16, 2014 
Patent: 8,485,565 B2 
Before: Grace Karaffa Obermann, Jeremy M. Plenzler, and Jon B. Tornquist
Written by: Plenzler