The Patent Trial and Appeal Board (PTAB) recently granted a rare request for rehearing in an inter partes review. See Shopify, Inc. et al. v. DDR Holdings, LLC, IPR2018-01012, Paper 35 (Oct. 26, 2020). Shopify had challenged DDR Holding’s U.S. Patent No. 9,043,228. In a mixed Final Written Decision (FWD), the PTAB initially found claims 1, 3, 7-9, 11, 15, and 16 obvious over the cited prior art. Administrative Patent Judge DeFranco dissented from the FWD on the basis that he would have also found claims 4, 5, 12, and 13 unpatentable over the prior art. Upon Shopify’s request for rehearing, the PTAB further considered the record regarding claims 4, 5, 12, and 13, and in its Decision Granting Petitioner’s Request on Rehearing (Rehearing Grant), the PTAB reversed that portion of the FWD and found claims 4, 5, 12, and 13 obvious in view of the prior art.
