PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open

A current determination by a Patent Trial and Enchantment Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation might have opened the door for aggrieved events to hunt rehearing for any cause, relatively than the prescribed scenario the place the panel “misapprehended or overlooked” some concern in an inter partes assessment (IPR).  Acknowledging in its order that the movement for rehearing didn’t fulfill the necessities for granting rehearing underneath 37 CFR § 42.71(d), the Board invoked the PTAB’s “inherent authority to reconsider our Decision Denying Institution” and relied on “changed facts” to institute the IPR, regardless of no statute or rule authorizing such an motion.  Though maybe unintended, the penalties of this determination could also be that the door to rehearing is now kicked huge open, for each patent house owners and petitioners:  if PTAB is allowed to disregard Part 42.71(d)’s rehearing necessities on this circumstance, there needs to be nothing stopping it from ignoring these necessities when deciding different rehearing requests, too.

In Canadian Photo voltaic Inc., et al v. The Solaria Company, IPR2021-00095, the Board initially exercised its discretion underneath § 314(a) to disclaim the petition underneath Fintiv attributable to the pendency of a parallel and superior ITC investigation.  Shortly after the Board issued its determination to not institute, and nonetheless inside the 30 day window to file a request for rehearing, Solaria moved to drop the challenged patent from the parallel ITC continuing.  Canadian Photo voltaic instantly filed its request for rehearing underneath 37 CFR § 42.71(d) arguing that the Board “misapprehended the nature and fragility of Patent Owner’s assertion of the [challenged patent] in the ITC Investigation and the corresponding likelihood that the ITC Investigation would yield a final invalidity determination before a final written decision.”  The Board identified that they didn’t agree that they “misapprehended anything,” and didn’t tackle the different prong for rehearing as a result of the request didn’t allege that the Board ignored something.  As an alternative, the Board famous that they “do agree that the facts as they stand today do not support” their determination denying establishment, and “in light of the changed facts,” the Board modified their earlier determination that exercised their discretion to disclaim establishment, and instituted the IPR after an evaluation on the deserves.

The justification for granting rehearing supplied by the Board is outdoors the guidelines governing PTAB course of, which offers {that a} request for rehearing should be predicated on whether or not the Board misapprehended or ignored one thing, neither of which occurred right here, as acknowledged by the Board.  37 CFR § 42.71(d).  Relying as an alternative on a principal of “inherent authority,” citing GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015), the Board granted rehearing attributable to modified info and instituted the IPR, regardless of no express statutory authorization to take action.

The choice has at the very least two vital takeaways for PTAB practitioners.  First, PTAB panels could also be inclined to grant rehearing attributable to causes aside from whether or not the Board “misapprehended or overlooked” one thing.  This new growth may result in quite a few challenges that have been beforehand closed off, not simply the scenario of modified info.  Second, patent house owners participating in patent assertion shouldn’t assume that the risk of an IPR denied underneath Fintiv is gone till the window for submitting a request for rehearing has previous, as the Board has simply demonstrated a willingness to institute an IPR beforehand denied underneath Fintiv, if the Fintiv justification not exists.

Going ahead, we’ll see if this rehearing grant will give rise to an enchantment; whereas many avenues for enchantment have been closed for PTAB practitioners, this current determination might present one other avenue for a celebration to strategy the Federal Circuit with justification to rein in PTAB actions that weren’t particularly licensed and which can have violated the Administrative Process Act.

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