The Patent Trial and Appeal Board (PTAB) recently granted a rare request for rehearing in an inter partes review. See
A request for rehearing requires the party challenging the FWD to identify all matters the party believes the Board to have “misapprehended or overlooked” and the place on the record “where each matter was previously addressed in a motion, opposition, or reply.” 37 C.F.R. § 42.71(d). The party challenging the FWD has the burden to show that the FWD should be modified. Id.
Shopify's request for rehearing focused on claim 4. Claim 4 depends from independent claim 1, which had been found obvious over the prior art in the FWD. In its Request for Rehearing, Shopify argued that one of the cited prior art references rendered obvious the additional features recited in claim 4. Specifically, Shopify argued that the PTAB had misapprehended or overlooked Shopify's arguments regarding claim 4 by “providing a reference to where it [was] made in the original Petition, as well as supporting evidence that include[d] testimony by [Shopify's expert].” Rehearing Grant at 5.
The PTAB found Shopify's citations and support sufficient to grant rehearing, and upon reconsidering the record, found that Shopify's arguments regarding claim 4 were unrebutted. The Board made similar findings for claim 5, which depends from claim 4, and for claims 12 and 13, which include “limitations that generally parallel the limitations recited in claims 4 and 5.” Rehearing Grant at 7.
Concluding that Shopify's burdens were satisfied, the Board found in favor of Shopify's request for rehearing. Thus, the Board found that all of claims 1, 3-5, 7-9, 11-13, 15, and 16 of
Originally Published by Finnegan,
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