The Board Cannot Misapprehend or Overlooked an Argument Not Presented

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In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00062, Paper (July 2, 2014) The Board denied rehearing of its decision not to institute an inter partes review of certain redundant grounds.  In its request for rehearing, petitioner provided an explanation of how the grounds were not redundant, but the Board said:

The fact that Rackspace points out explicitly now the relative benefits of certain grounds over others does not mean that we misapprehended or overlooked such benefits. In other words, we could not have misapprehended or overlooked an argument that was not presented in the first instance in the petition.

A petitioner presenting multiple grounds should justifiy the mulitple grounds in the petition, or risk a finding of redundancy that cannot be overcome.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.