Huawei v. Optis Cellular (IPR2018-00816): New Evidence with a Rehearing Request

A request for rehearing under 37 C.F.R. § 42.71(d) asks the Board to reconsider a decision on the existing record. Huawei Device Co. v. Optis Cellular Technology, LLC, IPR2018-00816 (Paper 19, January 8, 2019), explains what happens when a party also attaches new evidence. The Board designated this decision precedential. Designations can change, and USPTO procedures for review of institution decisions have changed since 2019, so check the USPTO’s current list of decisions and guidance.

Background

Huawei petitioned for review of claims of Optis’s U.S. Patent No. 8,437,293, which concerns scheduling requests in wireless communications. The Board denied institution, construing “scheduling request” as limited to a single-bit message because the specification disclaimed extending it to several bits. Huawei’s grounds did not meet that construction.

Huawei asked for rehearing and filed three new exhibits with its request. It argued that the Board misread the specification and Federal Circuit precedent, that the plain meaning of the term allowed multi-bit messages, that Optis had taken an inconsistent construction position in district court, and that the petition elsewhere showed how the art met even the Board’s construction.

What the Board decided

New evidence needs good cause

The rehearing rule allows a single request without prior authorization but does not say whether new evidence may accompany it. The Board looked to the Trial Practice Guide, which said that evidence not of record at the time of the decision will not be admitted absent good cause. The Board identified two acceptable routes: ideally, request a conference call before filing to argue good cause; alternatively, argue good cause in the request itself. Huawei did neither, so the Board expunged the exhibits under 37 C.F.R. § 42.7(a).

No misapprehension of claim construction

The Board reaffirmed that the specification expressly described the invention as solving the prior-art problem without increasing the scheduling request from one bit to several, and that no embodiment said otherwise. Applying the broadest reasonable interpretation standard then in use for IPRs, a construction cannot be so broad as to include what the specification disclaims.

New arguments are not “overlooked”

Huawei’s argument about Optis’s district court position was new. The Board could not have overlooked something never presented. Huawei had notice from the preliminary response that construction was disputed and could have asked to file additional briefing, but did not.

The Board will not search the petition

Huawei admitted in a footnote that its petition had not applied a particular argument to the claimed “second” scheduling request. The Board declined to search sixty-seven pages to assemble a new theory; cross-references must be cited with particularity.

The request was denied.

Why it matters

The decision gives a clear procedure for new evidence at the rehearing stage and reinforces familiar limits: rehearing is about what the Board misapprehended or overlooked in the record, not a chance to rebuild the case. It pairs naturally with the earlier rehearing decision in Conopco v. Procter & Gamble.

It also offers drafting lessons. When the patent owner’s preliminary response puts claim construction in play, a petitioner should consider asking for leave to reply rather than waiting for a rehearing. For construction principles, see claim construction during IPR; for adding evidence during trial, see supplementing the record.

Later developments

Since November 13, 2018, the Board has construed claims in AIA trials under the same standard used in district court rather than the broadest reasonable interpretation; this petition was filed before that change. Separately, Director Review procedures for Board decisions have been introduced and revised several times since this decision; readers should check current USPTO guidance on what review is available and how to request it.

Key takeaways

• New evidence filed with a rehearing request requires a showing of good cause, raised in a pre-filing conference call or in the request itself.
• Without that showing, the Board expunged the new exhibits under 37 C.F.R. § 42.7(a).
• Arguments raised for the first time on rehearing cannot have been misapprehended or overlooked.
• The Board will not hunt through a petition for an argument the petitioner did not make where it mattered.