Category Archive: Rehearing

Jan 04

Federal Circuit to Reconsider Achates Decision en banc

The Federal Circuit is set to reconsider one of its more controversial decisions en banc, when it decides whether the Achates Reference Publishing, Inc. v. Apple Inc. decision was correctly decided. Specifically, in Wi-Fi One, LLC v. Broadcom Corp., the Court requested supplemental briefing on the following issue: “Should this court overrule Achates Reference Publishing, …

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Aug 05

Federal Circuit Provides Ammunition to Patentees In Magnum Decision

Patent Owners gained a bit of a reprieve in the Federal Circuit’s recent decision in In Re Magnum Oil Tool Int’l, Ltd., decided on July 25, 2016. In several key respects, Patent Owners regained some footing in the otherwise daunting IPR process. As an initial matter, in one of its first post-Cuozzo (Supreme Court edition) decisions, the …

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Jul 02

Board Has Change of Heart On Rehearing

A request for rehearing is generally considered the IPR equivalent of an end-of-the-game Hail Mary pass, but just like in football, sometimes it works, as illustrated by the Board’s reversal of its prior decision denying review in Handi Quilter, Inc. & Tacony Corporation v. Bernina International AG, IPR2013-00270. The Board originally denied review based on …

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Dec 16

Rationale from Denied Ground Used By PTAB In Final Written Decision

Lost a challenge ground in the Board’s Decision to Institute? The Board has given some hope that such denied grounds may still of use in an IPR proceeding in McClinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR2013-00231, involving US Pat. No. 8,079,413. In this decision on a motion for rehearing, the Board affirmed the propriety …

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Jul 03

PTAB Grants Rare Motion for Reconsideration

In PNY Tech., Inc. v. Phison Elec. Corp., (IPR2013-00472, Paper 16), Patent Owner filed a request for rehearing of the Decision on Institution contesting the Board misinterpreted the governing law regarding inherency. To date, less than 10% of such Motions for Reconsideration have been granted. Because the Board granted the motion-in-part, such a rarity merits …

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Nov 21

Rehearing? PTAB Mostly Says “We Heard You Well Enough the First Time…” – Part II

Having considered the numerous requests for rehearing filed in relation to orders granting an IPR trial (HERE), we now turn to all the other orders relating to requests for rehearing, including the one order that actually granted such a motion: On Order Denying Institution of Inter Partes Review Trial Dominion Dealer Solutions, LLC v. Autoalert, Inc., IPR2013-00220 …

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Nov 20

Rehearing? PTAB Mostly Says “We Heard You Well Enough the First Time…” – Part I

As parties to inter partes review proceedings (and the PTAB for that matter) have felt their way through the first year of IPR proceedings, there have been ample disappointments and, therefore, related Motions for Rehearing.  Indeed, there have been many such motions, and so this article is just Part I of a summary of rehearing decisions, with …

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