Takeaway: The Board’s failure to analyze the correct claim language in deciding not to institute could provide grounds for a successful request for rehearing of a decision on institution.

In its Decision, the Board granted in part and denied in part Petitioner’s Request for Rehearing of the Board’s Decision on Institution. Petitioner requested rehearing of the Board’s denial of institution on four grounds, and the Board granted Petitioner’s request as to one ground and denied the remaining.

The Board noted that the standard when rehearing a decision on institutionis that the “panel will review the decision for an abuse of discretion,” which occurs if a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” The matters allegedly misapprehended or overlooked must be specifically identified.

With respect to the successful rehearing request regarding the anticipation of claims 31 and 37, Petitioner argued that the Board had analyzed the incorrect claim language. In this regard, the Decision on Institution quoted language recited in claim 1 rather than the language recited in claims 31 and 37.  Therefore, the Board granted the request with respect to this ground and was persuaded, based on the correct claim language, that Petitioner established a reasonable likelihood of prevailing.

With respect to the remaining non-instituted grounds, the Board was not persuaded by Petitioner’s arguments that it abused its discretion in deciding not to institute. In particular, the Board found that Petitioner improperly presented new arguments not found in the Petition and that its arguments were not persuasive.

TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00266
Paper 21:  Decision on Petitioner’s Request for Rehearing
Dated: August 11, 2014
Patent: 7,994,462 B2
Before: Justin T. Arbes, Benjamin D.M. Wood, and Neil T. Powell
Written by: Wood