Takeaway: 35 U.S.C. § 328 does not require the Board to substantively evaluate every possible ground put forth by a petitioner; thus, the Board is authorized to institute post-grant review on only some of the challenged claims and some of the grounds of unpatentability asserted for each claim.

In its Decision, the Board denied Petitioner’s Request for Rehearing. In doing so, the Board concluded that it had not abused its discretion in refraining from providing assurances in its Decision on Institution as to whether the denied grounds could be reasserted before either the Board or before the U.S. Court of Appeals for the Federal Circuit.

The Board had issued a Decision on Institution which had instituted covered business method patent review of claims 39-44 of the ’548 patent as being unpatentable under both 35 U.S.C. § 101 (for being directed to patent-ineligible subject matter) and 35 U.S.C. § 102 (for being anticipated by 1997 ACS.” Petitioner, in response, filed a Request for Rehearing, which contended “that the Board improperly relied upon 35 U.S.C. § 326(b) ‘to deny institution of certain other proposed grounds’ and ‘seeks rehearing to ensure that those remaining unpatentability grounds are either instituted as part of this proceeding or are available later.’”

In this regard, Petitioner argued that the Board “did not address substantively the denied grounds” and that the Board did not have “any statutory authority to deny grounds on the basis of administrative necessity.” Petitioner had also argued that the Board had not “explained how denying a few grounds of unpatentability set forth within the defined page limits can be necessary for efficiency.” Moreover, Petitioner had argued that “it is unclear from the Decision if “any consideration was given to the possible estoppel effect that may result in unrecoverable defensive rights to the Petitioner.”

The Board did not find Petitioner’s assertions to be persuasive, however. As summarized by the Board, Petitioner’s Request for Rehearing failed to argue that the Board had misapprended or overlooked Petitioner’s arguments in the Petition, and instead argued that Petitioner “is in the best position to set forth all of the grounds that are appropriate and that the Board must substantively demonstrate that those grounds are somehow defective, if they are not to form the basis of a trial.” Thus, the Board found Petitioner’s assertions to be “in direct opposition to the clear language of 35 U.S.C. § 324(a), granting the Office discretion as to whether to institute a post-grant review.” Accordingly, the Board found that Petitioner had not shown that the Board abused its discretion in denying the additional grounds proposed in the Petition.

Petitioner had also sought clarification that the Board’s “decision denying several asserted grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding ‘does not affect the Petitioner’s ability to argue the same grounds in this proceeding on appeal before the Court of Appeals for the Federal Circuit and/or at the Court of Federal Claims, or in a future post-grant proceeding.’” In response, the Board indicated that it did not have authority to ensure the ability of Petitioner to assert grounds in a proceeding before any court. Nor did the Board believe that it had the ability to provide assurances that Petitioner “can argue the same grounds in this proceeding on appeal before the Court of Appeals for the Federal Circuit”—meaning that USPS seeks assurance it can argue the denied grounds in any appeal from a final written decision resulting from the instituted review.”

The United States Postal Service (USPS) and The United States of America, as represented by the Postmaster General v. Return Mail, Inc., CBM2014-00116
Paper 24: Decision on Request for Rehearing
Patent 6,826,548 B2
Dated: February 20, 2015
Before: Kevin F. Turner, Barbara A. Benoit, and Jo-Anne M. Kokoski
Written by: Turner