In Handi Quilter, Inv. v. Bernina International AG, the PTAB granted the Petitioner’s request for rehearing based on arguments it overlooked in its previous non-institution decision. IPR2014-00270, Paper 17 (December 30, 2014).

The challenged claims were directed to a quilting machine that automatically inserts stitches based on movement of the fabric, with the movement being detected by an optical sensor with specified functions.

The Petitioner’s primary obviousness reference described a similar motion-controlled quilting machine, but did not describe the function of the motion sensor in any detail. Instead, the reference merely indicated that suitable sensors were already known. The other obviousness reference described an optical mouse motion sensor that had the functions recited in the claims.

In its non-institution decision, the Board held that the Petitioner argued only that it was possible to combine the references, but did not persuasively argue a motivation to combine. The decision noted deficiencies in the expert testimony, finding that it was conclusory.

In its request for rehearing, Petitioner argued that the Board overlooked its arguments that the references themselves, independent of any expert testimony, provided sufficient motivation to combine. The Petitioner cited specific arguments in the petition and noted that those arguments were not addressed in the non-institution decision.

In its decision on the request for rehearing, the Board considered the motivation issue in some detail and agreed that it had “misapprehended the significance of this argument in the Petition.” It further agreed that Petitioner had carried its burden of demonstrating a reasonable likelihood that the claims were obvious and, therefore, instituted a trial.

While rehearing requests are rarely granted, this decision illustrates that a successful request does not attempt to present new evidence or arguments, but instead draws the Board’s attention to arguments and evidence already set forth in the petition and persuasively argues that those arguments were not properly considered.