The PTAB Issues a Rare Grant of Request for Rehearing in View of Institution Decision Overlooking a Figure in Prior Art

Written by Casey D. Donahoe, Ph.D. and Kerry S. Taylor, Ph.D.

The Patent Trial and Appeal Board granted a rare request for rehearing of its earlier decision denying institution of an asserted anticipation ground in Asustek Computer, Inc. v. Avago Technologies General IP (Singapore) Pte. Ltd, IPR2016-00647, Paper 23 (P.T.A.B. March 8, 2017).    

Patent owner Avago Technologies General IP (Avago) owns U.S. Patent No. 6,430,148, which is directed to encoding digital data for transmission between modems.  Petitioner Asustek Computer, Inc. (Asustek) challenged the patent on two anticipation grounds based on different prior art references, “Schmidl” and “Cioffi.”  In the initial institution decision, the Board granted institution of an inter partes review (IPR) for the Schmidl anticipation ground, but the Board denied institution for the Cioffi anticipation ground.  The Board’s decision not to institute the Cioffi ground relied largely on a single figure in Cioffi, which the Board determined failed to teach the claimed invention. 

Petitioner Asustek filed a request for rehearing, asking the Board to reconsider its denial of the Cioffi anticipation ground.  Specifically, Asustek argued that the Board, in denying the Cioffi anticipation ground, overlooked a second figure in Cioffi disclosing the claimed invention, which the petitioner also cited in its Petition. In its rehearing decision, the Board acknowledged that it did not sufficiently credit the second figure’s teachings in Cioffi, which was a significant component of the petitioner’s original argument.  The Board therefore instituted review of the Cioffi institution ground.

Because the Board issued this rehearing decision after Avago had already filed its patent owner response, the Board authorized additional briefing, permitting Avago to submit a 4,000 word supplemental response, to which Asustek could submit a 4,000 word supplemental reply.

This case provides a rare example where the Board granted a request for rehearing on a petition to institute inter partes review.  Petitioners hoping for a similar result should point to evidence and arguments from the petition that the Board overlooked in rendering its decision.