Takeaway: The Board can base its decision to institute trial on both the petition and any evidence cited in the petition.

In its Decision, the Board denied Patent Owner’s request for rehearing of the Decision to Institute Trial. Patent Owner argued that the Board misapprehended the law governing institution of an inter partes review, specifically that the grounds based on a Palmer reference should not have been instituted because the Petition did not present or contain the necessary information to show there is a reasonable likelihood that at least one claim is unpatentable.

The Board disagreed with Patent Owner, noting that the rules permit the Petitioner to submit evidence such as copies of patents and printed publications with the petition. In this case, the Board’s Decision looked at the portions of the prior art and provisional application that were specifically cited by Petitioner.  Patent Owner argued that the Board “cobbled together” the arguments to support institution, but the Board stated that it reviewed only the evidence as cited to in the Petition.

Netflix, Inc. v. OpenTV, Inc., IPR2014-00267
Paper 16: Decision on Request for Rehearing
Dated: July 11, 2014
Patent 7,409,437 B2
Before: Sally C. Medley, James T. Moore, and Justin Busch
Written by: Moore