Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, Case IPR2018-00816, Paper 19
In this case, petitioner filed a Request for Rehearing of the Board’s Decision Denying Institution, along with three new exhibits. (See Paper 17.) Petitioner argued that the Board overlooked or misunderstood evidence related to the proper construction of a disputed claim term, and offered further support for its construction via the new exhibits, which showed contradictory positions by patent owner in the parallel litigation. (See id. at 8-10.)
The Board expunged the exhibits. (Paper 19 at 3-4.) In reaching this decision, the Board first noted that the rule governing rehearing requests, 37 C.F.R. § 42.71(d), did not address the submission of new evidence with the request. The Board then turned to the Trial Practice Guide, which states that in the context of rehearing requests, “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” 77 Fed. Reg. 48,756 at 48,768.
Relying on the above standard, the Board stated that “[i]deally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” (Paper 19 at 4.) Petitioner had done neither. The Board thus found that no showing for “good cause” had been made, and exercised its authority under 37 C.F.R. § 42.71(a) to expunge the exhibits. (Id.)
- By designating this opinion as precedential, the PTAB has made clear that it expects a showing of “good cause” for any new evidence raised in a request for rehearing.
- Though the Board noted that “good cause” could be argued in the request for rehearing itself, best practice to maximize the likely slim odds of the Board allowing the new evidence is to request a conference call with the Board. This will allow for a more nuanced and interactive discussion of the relevance of the new evidence and why it was not submitted earlier in the proceeding.