Takeaway:  It is not appropriate to use a request for rehearing to re-argue a case.

In its Order, the Board denied Petitioner’s Revised Requests for Rehearing of the Final Written Decision in IPR2013-00043 and IPR2013-0044.  The Requests for Rehearing were “Revised” because the Board has previously ordered Petitioner to re-present its originally filed Requests for Rehearing “in a proper form.”

The Board began by stating that “[m]any of the arguments presented in [Petitioner’s] Revised Requests for Rehearing amount to an attempt by [Petitioner] to re-argue its case.”  Although the Board indicated that this was not appropriate, the Board nevertheless addressed issues raised by Petitioner in the Revised Requests for Rehearing.

Petitioner argued that the Board had overlooked the need to interpret the recited phrase “cure dose.”  The Board responded that because Petitioner had failed to establish through its witnesses that the compositions that it had made attained the claimed 95% property, the meaning of “cure dose” did not matter.  According to the Board, the tested products were not shown to possess the property that the claimed cure dose was supposed to impart and, therefore, whatever Petitioner did to administer a cure dose was irrelevant.

Petitioner also argued that the Board had incorporated R2 values into the claim.  The Board’s response was that instead, and as explained in the Final Written Decision, the evaluation of R2 values merely formed part of its analysis in considering the weight to be accorded the each of the party’s witnesses.  The Board went on to note that a related R2argument made by Petitioner was not persuasive because it was based on testing and testimony by Petitioner’s witnesses over which the Board had credited the testimony of Patent Owner’s witness.

Petitioner further argued positions relating to the test procedure relied on by Petitioner, Patent Owner’s test data, and the testimony of Patent Owner’s witness.  The Board was not convinced by any of these further positions.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00043 and IPR2013-00044
Paper 104: Decision on Petitioner’s Revised Requests for Rehearing
Dated: August 12, 2014
Patents 7,171,103 B2 (IPR2013-00043) and 6,961,508 B2 (IPR2013-00044)
Before: Fred E. McKelvey, Grace Karaffa Obermann, Jennifer S. Bisk, Scott E. Kamholz, and Zhenyu Yang
Written by: McKelvey