Rehear Here: Tracking Successful Requests for Rehearing in Inter Partes Reviews

AuthorRoshan S. Mansinghani - Robert K. Jain
PositionRoshan S. Mansinghani is senior patent counsel at Unified Patents Inc., where he initiates and litigates PTAB proceedings. He can be reached at roshan@unifiedpatents.com. Robert K. Jain is associate IP counsel at Unified Patents Inc., where he provides litigation support for PTAB proceedings. He can be reached at rjain@unifiedpatents.com.
Pages41-43
Published in Landslide® magazine, Volume 11, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
While Congress allows only certain issues of inter par-
tes review to be appealed (to the Federal Circuit),
federal regulations allow requests to the Patent
Trial and Appeal Board (PTAB) itself to reconsider its deci-
sions. These rehearing requests are rarely successful—perhaps
because they require a panel to decide it misapprehended or
overlooked an issue such that it constituted an abuse of discre-
tion. Here we comprehensively examine the 2017 inter partes
review rehearing decisions, their timing, and the outcomes.
Background: Statutory and Regulatory
Requirements for Review
Rehearing requests are authorized under 37 C.F.R. § 42.71(d).
Any decision of the PTAB can be reheard, including deci-
sions on motions, nal written decisions, and decisions on
institution.1 The PTAB uses an abuse of discretion standard,
and the burden is on the requester to demonstrate that the
PTAB misapprehended or overlooked an issue.
Unlike most other motions, no prior authorization from the
PTAB is required to le the request, but only one request may
be led. Section 42.71(d) identies two deadlines by which a
rehearing request must be led depending on the type of deci-
sion for which rehearing is requested. To request rehearing of
a nonnal decision or a decision to institute a trial, the request
must be led within 14 days of the decision; to request rehear-
ing of a nal decision or a decision not to institute a trial, the
request must be led within 30 days of the decision.
The Trial Practice Guide (TPG) has a short section on rehear-
ing requests—section II.P.—stating that evidence not in the
record will not be admitted absent good cause. It also explains
that the opposing party does not have the right to respond to the
request absent authorization from the PTAB. If authorized, the
regulations regarding motion practice before the PTAB govern
by default: the 15-page opposition is due one month from ser-
vice of the rehearing request;2 a ve-page reply (if authorized) is
due within one month from service of the opposition.3
The regulations do not specify a deadline for the PTAB
to decide a request for rehearing, but the TPG states that
the decision will be decided approximately one month after
receipt of the request. Below, we calculated averages for how
long the PTAB took to decide requests for rehearing in 2017
and found they are signicantly longer than a month.
2017 Statistics
The U.S. Patent and Trademark Ofce has not provided public
statistics on rehearing requests. For this article, we com-
piled rehearing decisions issued in 2017 in inter partes review
proceedings using a combination of manual annotations incor-
porated into the Unied Patents database and text searching of
decisions through Westlaw’s database (which does not anno-
tate decisions). While we have not veried that the data below
is fully comprehensive (e.g., by manually reviewing each
2017 PTAB decision to determine whether it was a rehearing
decision), we believe it is substantially complete, and at least
largely representative of any complete data set.
Rehear
Here
Tracking Successful Requests for
Rehearing in Inter Partes Reviews
By Roshan S. Mansinghani and Robert K. Jain
Roshan S. Mansinghani is senior patent counsel at Unied
Patents Inc., where he initiates and litigates PTAB proceedings. He
can be reached at roshan@uniedpatents.com. Robert K. Jain
is associate IP counsel at Unied Patents Inc., where he provides
litigation support for PTAB proceedings. He can be reached at
rjain@uniedpatents.com.

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