Takeaway:  A typographical error in the petition causing the Board to overlook claims in one of the grounds of the petition may constitute a proper basis for the granting of a petitioner’s request for rehearing.

In its Decision, the Board granted Petitioner’s Request for Rehearing. Moreover, the Board modified the Decision instituting trial so that it was instituted on a different set of grounds.

The Board had issued a Decision instituting inter partes review of claims 1-34 of the ‘555 patent. Petitioner had filed a Request for Rehearing contending that the Board had overlooked “the fact that claims 21-30 were included in Ground 2 of the Petition.” In particular, “Petitioner acknowledges that the Petition . . . included a “typo[graphical error] in the heading [that] might have caused the Board to overlook claims 21–30 in Ground 2 of the Petition.”

Petitioner “[acknowledged] that the Petition . . . included a “typo[graphical error] in the heading [that] might have caused the Board to overlook claims 21–30 in Ground 2 of the Petition.” Thus, the Board agreed with Petitioner “that the typographical error in the Petition caused [the Board] to ‘overlook the fact that claims 21-30 were included in Ground 2 of the Petition.’” Moreover, based on the Board’s review of Petitioner’s positions and supporting evidence, the Board was “persuaded that Petitioner has established a reasonable likelihood of prevailing in its challenge of claims 21-30 under Ground 2, in addition to claims 1-5, 14-20, and 32-34, as obvious over Redford.”

Therefore, the Board ordered that the Decision instituting trial be modified so that trial would be instituted on the grounds of : (1) claims 1, 3-5, 14-18, 20-26, 29, 30, 33, and 34 of the ‘555 patent as anticipated by Redford; (2) claims 1-5, 14-30, and 32-34 of the ‘555 patent as obvious over Redford; and (3) claims 2, 6-13, 31, and 32 of the ‘555 patent as obvious over Redford and Starbuck.” The Board further ordered that “the trial schedule remains the same as set forth in the Scheduling Order (Paper 8).”

Milwaukee Electric Tool Corporation, Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc. and One World Technologies, Inc. v. Irwin Industrial Tool Company, IPR2015-01462
Paper 13: Decision on Request for Rehearing
Dated: January 15, 2016
Patent: 8,579,555 B2
Before:  Josiah C. Cocks, Susan L. C. Mitchell, and Michael L. Woods
Written by:  Woods