Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC

When a party files a request for rehearing under 37 C.F.R. § 42.71(d) and attaches evidence not of record when the decision was entered, the Board will not admit it absent a showing of good cause. The party should ideally request a conference call with the Board before filing to argue good cause, or alternatively argue good cause in the rehearing request itself. Without such a showing, the Board may expunge the new exhibits under 37 C.F.R. § 42.7(a). No prior precedent directly addressed this issue in the text; the Board relied on the Practice Guide statement that evidence not already of record at the time of the decision will not be admitted absent a showing of good cause, because § 42.71(d) does not say whether new evidence may accompany a rehearing request. A petitioner seeking rehearing of a denial of institution cannot simply attach new exhibits. It must show good cause beforehand or in the request itself, or the exhibits will be expunged and not considered. A patent owner can oppose or ignore unexplained new exhibits and benefit from the Board's refusal to consider them, along with its refusal to hear new arguments raised first on rehearing. The Board reviews rehearing decisions for abuse of discretion, citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005), Arnold P'ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004), and In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). LEGAL TEST OR STANDARD: Under 37 C.F.R. § 42.71(d), a party may file a single request for rehearing without prior authorization. Under the Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012), "[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause." Good cause may be argued in a conference call before filing, or in the rehearing request itself. Without it, the Board may expunge the exhibits under 37 C.F.R. § 42.7(a). TRIGGERING FACTS: Huawei filed a rehearing request of the decision denying institution, with Exhibits 1039-1041 that were not of record when that decision was entered on November 5, 2018. Huawei did not request a conference call before filing and did not explain in the request why the exhibits should be admitted. The Board expunged the exhibits and did not consider them. KEY QUOTE: "Absent a showing of “good cause” prior to filing the Request for Rehearing or in the Request for Rehearing itself, these exhibits should not be admitted and, therefore, they are not entitled to consideration." (Paper 19, p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If you want to submit new evidence with a rehearing request, ideally request a conference call with the Board before filing to argue good cause, or at least argue good cause expressly in the rehearing request itself. Otherwise the exhibits will be expunged.