Takeaway: If a petition includes a typographical error that leads to a decision not to institute, the correct course of action is not to file a request for rehearing, but instead to file a motion to correct the petition with a request to modify the decision.

In its Decision, the Board denied Petitioner’s request to rehear the Board’s decision not to institute review of claims 3, 26, and 27 of the ’792 Patent. In its Decision on Institution, the Board instituted review of claims 1, 2, and 4-17, but declined institution of claims 3, 26, and 27.

The Board began with the applicable standard for a request for rehearing, stating that the burden lies with the party requesting the rehearing, and the request must identify all of the matters the party believes were misapprehended or overlooked by the Board. As to claims 26 and 27, Petitioner argued that the Board misapprehended the obviousness argument based on the combination of Thomson, Harris, and Balaban when it did not institute review.  Petitioner included a ground for challenging claim 26 as obvious over Thomson and Harris contending that Thomson “inherently” discloses “a standard selection circuit,” and the Board found that Petitioner did not demonstrate a reasonable likelihood of prevailing on that challenge because Petitioner did not provide evidence to support its inherency contention.  Petitioner did not contend that the Board misapprehended any matter regarding that ground, but Petitioner also included a ground challenging claims 26 and 27 as obvious over Thomson, Harris, and Balaban.  The argument in the Petition on this ground only mentioned claim 27, not claim 26, and the Board found that Petitioner had failed to meet its burden with respect to claim 26, from which claim 27 depends.  The request for rehearing did not allege that the Board was mistaken in concluding that Balaban was asserted only in connection with claim 27, and the Board found that there is an insufficient basis presented for granting rehearing.

Regarding claim 3, Petitioner asserted that the Board abused its discretion. Petitioner cited to Gunter for disclosing the recited limitation of claim 3.  The Board agreed that Gunter discloses that limitation, but the Petition and the expert declaration cited to Arambepola, not Gunter.  Petitioner acknowledged that the citation was wrong, but said that it was a typographical error that was not discovered until after the Decision was filed.  The Board held that Petitioner cannot correct its own mistake through the request for rehearing.  Instead, Petitioner should file a motion to correct the petition and request modification of the Decision on Institution.

Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00809
Paper 19: Decision on Request for Rehearing
Dated: November 13, 2014
Patent: 7,265,792 B2
Before: Phillip J. Kauffman, Gregg I. Anderson, and Patrick M. Boucher
Written by: Anderson