The PTAB does sometimes make mistakes and isn’t shy about owning up to them. As long as a rehearing request identifies a dispositive misunderstanding or omission by the Board, it stands a good chance of success.
Boston Scientific Corp. v. UAB (IPR2015-00918, Paper 14) is a case in point. The Petitioner had argued that the patent was vulnerable to intervening art due to an invalid priority claim. The Board initially disagreed with Petitioner and denied the Petition. In its rehearing request, the Petitioner showed that the Board made a simple but significant error in its findings of fact. The Board agreed, reversed itself, and instituted trial.
What was the error? In essence, a misplaced decimal point. The case concerns implantable pacemakers. Pacemakers can produce various kinds of electrical pulses, such as low-energy pacing pulses and high-energy defibrillating pulses. The issue was whether the energy levels disclosed in the priority application were consistent with pacing pulses. Pacing pulses are typically on the order of 25 microJoules, whereas defibrillating pulses are a thousand times larger, on the order of 25 milliJoules. The priority application disclosed energy levels in the range of 0.01 to 0.05 Joules. The Board mistakenly found that this range embraced 25 microJoules and thereby provided adequate support for a claim limitation directed to pacing pulses. The Board determined that the Petitioner had not demonstrated a lack of entitlement to priority and denied the challenge on the basis that the intervening reference was not prior art.
On rehearing, the Petitioner pointed out that the priority application’s disclosure of 0.01 to 0.05 Joules (10 to 50 milliJoules) is actually consistent with the much larger defibrillating pulses, and that the Board fell prey to a unit conversion error in determining that 25-microJoule pacing pulses fall within that range. The Board agreed and determined, on the record currently before it, that the Petitioner had made a reasonable showing that the priority application did not disclose pacing pulses. The Board then instituted trial.
The Board’s error here on a dispositive fact was readily apparent. Keep an eye out for such mistakes. The Board takes the non-appealable nature of institution decisions seriously and will correct its errors.