Legal issue: 35 USC 316(a)(8), Office Trial Practice Guide, standard for submission of new evidence in support of a request for rehearing.
The PTAB relied upon the Trial Practice Guide (TPG), not an enumerated rule, for its precedential holding. That reliance is contrary to a prior policy of the PTAB deeming the TPG to not be a promulgated rule.
In particular, the PTAB relied upon the TPG’s statement “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause,” to exclude evidence submitted with a request for rehearing. The PTAB advised that a party seeking entry of evidence supporting a request for rehearing, needed to show good cause, either via a teleconference call prior to requesting rehearing, or within the written request for rehearing.
As an initial matter, we address whether Huawei followed the proper procedure for admitting Exhibits 1039–1041 into the record of this proceeding. As we explain above, Huawei filed its Request for Rehearing, along with Exhibits1039–1041. These exhibits were not of record at the time the Decision Denying Institution was entered on November 5, 2018. Compare Paper 18 (“Petitioner’s Updated Exhibit List”), with Paper 2 (“Pet.”), i–iii (“Petitioner’s Initial ExhibitList”). *** The rule governing a rehearing request permits “[a] party dissatisfied with a decision . . . [to] file a single request for rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d) (emphasis added). This rule does not address explicitly whether the requesting party also may file new evidence with its rehearing request. The Office Patent Trial Practice Guide, 77Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”), however, is instructive on this matter. When discussing general procedures applicable to rehearing requests, the Practice Guide states that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” Id. at 48,768(emphasis added). Ideally, 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. [Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, IPR2018-00816,paper 19 (1/8/2019; designated precedential 4/5/2019).]
Here, Huawei did not request a conference call with the Board prior to submitting Exhibits 1039–1041 with its Request for Rehearing entered on December 5, 2018. Nor did Huawei explain why these exhibits should be admittedin the Request for Rehearing itself. See generally Req. Reh’g 1–15. Absent ashowing of “good cause” prior to filingthe Request for Rehearing or in the Request for Rehearing itself, these exhibits should not be admitted and, therefore, they are not entitled to consideration. Consequently, we exercise our authority under 37 C.F.R. § 42.7(a) to expunge Exhibits 1039–1041. [Huawei Device Co.,Ltd. v. Optis Cellular Tech., LLC, IPR2018-00816, paper 19 (1/8/2019;designated precedential 4/5/2019).
Author: Rick Neifeld, Neifeld IP Law, PC
5400 Shawnee Road, Suite 310
Alexandria, VA 22312-2300 USA
