Takeaway: In a request for rehearing, the party making the request must support its position with evidence from the original papers.

In its Decision, the Board denied Petitioner’s request to rehear the Board’s decision not to institute trial with respect to claims 13 and 14 of the ’585 Patent. In its Decision on Institution, the Board instituted review of claims 1-3, 2, 10, and 16-19, but declined institution of claims 13 and 14.

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. Petitioner argued that the Board misapprehended the obviousness argument based on the combination of Thomson, Harris, and Balaban when it did not institute review of claims 13 and 14.  Petitioner included a ground for challenging claim 13 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 13 and 14 as obvious over Thomson, Harris, and Balaban.  In that ground, Petitioner again stated that Thomson inherently disclosed the standard selection circuit, but in the request for rehearing, Petitioner disavowed the reliance on the inherent disclosure, stating that its expert is of the view that claim 13 is obvious regardless of whether Thomson inherently discloses the circuit.  The Board found that the expert’s testimony belies Petitioner’s new argument and is consistent with the original argument of inherent disclosure, which was addressed in the Decision on Institution.

Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00728
Paper 19: Decision on Request for Rehearing
Dated: November 13, 2014
Patent: 7,075,585 B2
Before: Phillip J. Kauffman, Gregg I. Anderson, and Patrick M. Boucher
Written by: Boucher