Trials@uspto.gov Paper 39
`571-272-7822 Date: Mar. 20, 2026
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PADAGIS US LLC,
`Petitioner,
`v.
`NEURELIS, INC.,
`Patent Owner.
`
`IPR2025-00464 (Patent 8,895,546 B2)
` IPR2025-00465 (Patent 11,241,414 B2)
` IPR2025-00466 (Patent 11,793,786 B2)1
`
`
`Before GRACE KARAFFA OBERMANN, ANNETTE R. REIMERS, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing of Order Denying Patent Owner’s Motion
`for Leave to File Petition for Certificate of Correction on Patents
`Undergoing Inter Partes Review
`37 C.F.R. § 42.71
`
`
`1 This decision addresses issues common to the listed cases. Therefore, we
`exercise our discretion to issue one decision to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`2
`I. BACKGROUND
`On December 15, 2025, and pursuant to Patent Owner’s request, the
`Board authorized Patent Owner to file a motion for leave to petition for a
`certificate of correction on each of the patents challenged in the above-
`captioned proceedings. Paper 23; Ex. 3001 (request for authorization).2 On
`December 23, 2026, Patent Owner filed its motion (Paper 26 (hereafter
`“Motion” or “Mot.”)), which Petitioner opposed on January 9, 2026
`(Paper 30, hereafter “Opposition” or “Opp.”).
`Patent Owner’s Motion requested the Board cede its jurisdiction over
`the challenged patents in the ongoing IPRs so that Patent Owner could file a
`petition seeking from the Director a certificate of correction that would
`amend each patent to include a disclosure related to a “Joint Research
`Agreement” (“JRA”) and the parties to that agreement. Mot. 1–2. If the
`patents were amended as proposed, Patent Owner planned to invoke the
`“safe harbor defense” under 35 U.S.C. § 103(c)(2)(C) (pre-AIA) and
`eliminate the asserted Gwozdz reference from consideration in the
`obviousness grounds raised by Petitioner against each of the challenged
`patents. Id. at 1–3. That result—removing Gwozdz from consideration—
`would essentially be case dispositive across all three proceedings.
`The Board, in a decision and order dated February 6, 2026, denied
`Patent Owner’s Motion. Paper 36 (hereafter “Decision”). As explained in
`the Decision, we determined that the Motion had not provided a “sufficient
`basis” to support Patent Owner’s position that the challenged patents may be
`
`2 Unless otherwise noted, all citations are filings in IPR2025-00465. Similar
`papers and exhibits were filed in IPR2025-00464 and IPR2025-00466.
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`3
`corrected for the alleged mistake in omitting the JRA disclosure and,
`additionally, “we determine[d] that substantial prejudice to Petitioner
`warrant[ed] denial of the Motion.” See, e.g., Decision 12. Patent Owner
`now requests rehearing of that Decision. Paper 37 (“Request”).
`II. STANDARD OF REVIEW
`On a request for rehearing, the Board reviews the decision subject to
`the request for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be shown where a “decision was based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1998). “The burden of showing a decision should be
`modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d).
`Moreover, the rehearing “request must specifically identify all matters the
`[requesting] party believes the Board misapprehended or overlooked, and
`the place where each matter was previously addressed in a motion, an
`opposition, a reply, or a sur-reply.” Id.
`III. ANALYSIS
`Patent Owner argues that rehearing should be granted for three
`reasons. First, Patent Owner argues the Board abused its discretion by
`addressing the merits of whether a certificate of correction should be issued
`on the challenged patents, which Patent Owner states is “a task reserved for
`the Director.” Request 1, 2–4. Second, Patent Owner contends the Board
`misapprehended the law and overlooked facts in addressing the merits
`insofar as the Board questioned whether the patents’ omission of the JRA
`disclosure was a “minor” mistake, or a mistake that “occurred in good faith,”
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`4
`as set forth under the relevant statutory provisions (i.e., 35 U.S.C. § 255).
`Id. at 1, 4–10. Third, Patent Owner argues the Board erred in its prejudice
`analysis, including by finding that Petitioner was prejudiced while allegedly
`ignoring any prejudice to Patent Owner. Id. at 1, 10–15. We address these
`arguments in turn below.
`A. Alleged Abuse of Discretion
`According to Patent Owner, “[t]he Panel exceeded its authority when
`denying leave to seek the Certificate of Correction, based on its view that
`[Patent Owner] had not demonstrated that the omission was ‘minor’ or that
`the ‘mistake occurred in good faith.’” Request at 2–3 (citing Decision 7–9)
`(additional quotation marks omitted). Patent Owner points out that,
`consistent with the Federal Circuit’s holding in Honeywell, a decision on the
`merits of a patentee’s request under § 255, including whether the mistake for
`which correction is sought is “minor” or is shown to have “occurred in good
`faith,” belongs to the Director. Honeywell Int’l Inc. v. Arkema Inc., 939
`F.3d 1345, 1349 (Fed. Cir. 2019) (explaining, inter alia, that the Director
`“has not delegated its Section 255 authority to the Board”). Patent Owner
`argues the Board did not heed the limitations on its authority and instead
`decided those merits issues for itself. Request 3. And, Patent Owner
`contends, other Board decisions have granted patentees leave to petition for
`a certificate of correction without requiring any explanation of how the
`merits are met. Id. at 3–4 (citing Sandoz Inc. v. Acerta Pharma B.V.,
`IPR2023-00478, Paper 17 at 22 (PTAB Aug. 7, 2023)).
` We agree with Patent Owner that Honeywell is controlling precedent
`and that it confirms the limits on the Board’s authority to decide the ultimate
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`5
`merits issues under § 255. Indeed, we repeatedly recognized this in our
`Decision. See, e.g., Decision 5 (citing Honeywell and stating, “[a]s the
`Federal Circuit has explained, the Director—not the Board—is responsible
`for deciding whether a certificate of correction is appropriate under § 255”).
`We nonetheless disagree with Patent Owner’s characterization of our
`Decision as actually deciding the § 255 merits issues and overstepping the
`limits on the Board’s authority. Citing the standard set forth in Honeywell,
`which addresses motions for leave to request a certificate of correction on
`patents undergoing inter partes review that are under the Board’s exclusive
`jurisdiction, we explained that the Board is tasked with “determining
`whether there is a sufficient basis supporting [a patentee’s] position that the
`mistake may be correctable” under § 255. Decision 5 (quoting Honeywell,
`939 F.3d at 1349–50). That “sufficient basis” standard is what we applied in
`the Decision. Id. at 5–8, 12.
`Accepting Patent Owner’s criticisms of the Decision, however, would
`carry significant consequences. It would treat the “sufficient basis” inquiry
`as a threshold so low and permissive that the Board cannot comment on the
`manifest holes in a patentee’s claim for relief—like we did here, where we
`noted that Patent Owner did not even assert that the alleged mistake
`occurred in good faith, much less try to substantiate such an assertion in any
`way. See Decision 7–8. We see material differences in weighing the merits
`of the argument and evidence and then deciding whether the § 255 statutory
`elements are satisfied such that the certificate of correction should issue,
`which is the Director’s purview, versus simply asking whether a patentee
`has raised even a plausible allegation that the elements are met such that the
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`6
`mistake may be corrected. If the Board cannot consider the latter, in
`deciding whether leave should be granted, the “sufficient basis” inquiry is no
`threshold at all. Patent Owner, in practical effect, requests the Board to read
`out the “sufficient basis” inquiry, contrary to controlling authority.
`Patent Owner’s citation of other Board decisions does not persuade us
`that we abused our discretion in denying the Motion. Patent Owner cites
`Sandoz as allegedly illustrating a case where the “Board found sufficient
`basis that the mistake may be correctable, despite the patent owner’s motion
`not delineating between whether the mistaken omission was ‘clerical’ or
`‘minor’ or providing any meaningful good-faith analysis.” Request 3–4
`(citing Sandoz, IPR2023-00478, Paper 11 at 5–6). Sandoz does not help
`Patent Owner.3 First, unlike Patent Owner’s Motion here, the patentee in
`Sandoz at least made an allegation that the omission of a joint research
`agreement was “inadvertent and made in ‘good faith.’” Sandoz, IPR2023-
`00478, Paper 11 at 6. We are unpersuaded that it was error for the Board to
`point out the absence of any such allegation of “good faith” in the present
`case. Second, in Sandoz the patentee moved for leave to seek a certificate of
`correction months before the institution due date, which motion the Board
`denied as “moot” because institution was denied on discretionary grounds.
`Sandoz, IPR2023-00478, Paper 17 at 22. Inasmuch as the Board discussed
`
`3 Many of Patent Owner’s arguments in the Request, including its Sandoz
`argument, are new and not found in the Motion. A request for rehearing is
`generally not a vehicle to raise for the first time new arguments, authorities,
`and evidence. 37 C.F.R. § 42.71(d) (requiring the requesting party to
`identify where any allegedly overlooked or misapprehended matters were
`raised previously in the relevant papers).
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`7
`the patentee’s showing in that otherwise “moot” motion, that discussion is at
`best dicta. Id.
`In any event, our denial of Patent Owner’s Motion here was based on
`more than simply the questions we posed about Patent Owner’s showing on
`the statutory elements under § 255. Indeed, we even “assum[ed] Patent
`Owner ha[d] done enough to put at issue for a merits decision by the
`Director” whether the alleged mistake qualified as “clerical” or “minor”
`under § 255, but then noted other problems with the Motion, including its
`total silence on the “good faith” issue, and substantial and unfair prejudice to
`Petitioner from Patent Owner’s 7-year delay in pursuing any correction of
`the challenged patents. See, e.g., Decision 7–12 (finding that Patent Owner
`was (or should have been) on notice about the alleged mistake in omitting
`the JRA disclosure since at least 2019, when Gwozdz was successfully
`asserted as prior art in an IPR obviousness challenge against a directly
`related patent with nearly identical claims).4
`B. Alleged Misapprehension of the Law and Overlooked Evidence
`Patent Owner contends that the omission of the JRA disclosure is
`“minor” because it does not change the scope of the claims, and because the
`applicable statute and regulations indicate that a patent may be amended to
`include such a disclosure. Request 4–5 (citing, e.g., 35 U.S.C. § 103(c)(2)
`(pre-AIA), and 37 C.F.R. § 1.71(g)(1), (g),(3)).
`
`4 As explained in the Decision, on January 29, 2019, a family member patent
`was challenged in IPR2019-00451 (“the 451 IPR”) that resulted in a Final
`Written Decision concluding the claims would have been obvious over the
`same Gwozdz-based obviousness ground asserted here, which conclusion
`was subsequently affirmed by the Federal Circuit on appeal. Decision 8–12.
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`8
`We are unpersuaded that the Decision misapprehended the cited law
`and regulations. We cited those authorities expressly in the Decision.
`Decision 6–7. And, as noted above, our analysis proceeded on whether the
`relief sought by Patent Owner in its Motion should be granted even
`“assuming” Patent Owner’s citation of the applicable authorities was
`sufficient to put at issue for the Director whether the omission of the JRA
`disclosure here was “clerical,” “typographical,” or “minor.” Id. at 7.
`Patent Owner also argues the alleged mistake was “minor” because
`the Director has since authorized the JRA disclosure correction in a child
`application/patent related to the challenged ’414 patent. Request 5–6 (noting
`U.S. Patent No. 12,268,664 (the ’664 patent) is a descendant of the ’414 and
`’786 patents) (Ex. 2077 (the ’664 patent)). According to Patent Owner,
`“[t]he same day the Panel granted authorization to file” the Motion, Patent
`Owner “asked the Director to authorize correction” of the ’664 patent.
`Request 5–6. Patent Owner argues that because “the Director has already
`decided that this correction is proper, there can be no question that the
`Board’s lesser Honeywell standard is satisfied.” Id. at 6 (citing Ex. 2078
`(request and certificate of correction)).
`This is new argument relying on new evidence, which was not
`presented in Patent Owner’s Motion. Patent Owner contends that good
`cause exists to consider these materials, which allegedly “could not have
`been submitted” with the Motion. That is partly true because the
`February 10, 2026, grant of the certificate of correction on the related patent
`did not exist until just a few weeks ago. Ex. 2078, 1–2. Notably, however,
`Patent Owner did not timely inform that Board (e.g., in the Motion or
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`9
`Updated Mandatory Disclosures) that it was pursuing a certificate of
`correction on any related patents or applications, which Patent Owner could
`have done; as Patent Owner concedes, its request for a certificate on the ’664
`patent was made several days before the Motion was filed. Request 5–6.
`In any event, that wholly ex parte request and grant on a related patent
`that is not part of these IPR proceedings is divorced from important context
`raised here in the Motion and Opposition, including Patent Owner’s many
`years of delay in pursuing correction of the challenged patents and the
`substantial prejudice to Petitioner in these proceedings arising from that
`delay. Decision 10 (explaining that, as a result of Patent Owner’s delay,
`“Petitioner is [now] statutorily time-barred from filing another IPR petition
`against the challenged patents” that does not rely on Gwozdz). That is why,
`as confirmed in Honeywell and pursuant to regulation, a motion and the
`Board’s permission is required before a patentee may seek correction of
`patents undergoing inter partes review. 37 C.F.R. § 1.323.
`Patent Owner further argues that other Board panels have found that
`corrections of a patent to disclose a joint research agreement are “minor.”
`Request 7–8 (citing Commonwealth Sci. & Indus. Res. Org. v. BASF Plant
`Science GmbH, PGR2020-00033, Paper 26 at 4–5 (PTAB Mar. 18, 2021)
`(hereafter “CSIRO”)).5 As already pointed out, whether the correction
`sought by Patent Owner might appropriately be characterized as “minor”
`was ultimately not decisive for us in denying Patent Owner’s Motion.
`Decision 7. And CSIRO is distinguishable on at least the prejudice inquiry.
`
`5 Patent Owner also cites the motion submitted by patent owner in CSIRO
`(CSIRO, Paper 19).
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`10
`The only prejudice argument in CSIRO concerned a potential scheduling
`delay if relief was granted, and petitioner further noted that just one of the
`twenty-five grounds would be impacted if the patent-at-issue was corrected
`to include the disclosure related to a joint research agreement. CSIRO,
`Paper 21 at 6–7. Unsurprisingly, the issue of prejudice did not factor into
`the Board’s grant of the motion (CSIRO, Paper 26) and, even with the
`issuance of the certificate in that case, petitioner prevailed at trial on other
`grounds raised in the PGR without the Board reaching the one impacted art
`ground. CSIRO, Paper 40 at 31. Conversely, none of Petitioner’s grounds
`here across the three proceedings survives if Gwozdz is eliminated from
`consideration under § 103(c)(2)(C) (pre-AIA) and, importantly, for reasons
`explained in the Decision and herein, Patent Owner’s 7-year delay in
`pursuing correction of the challenged patents in these proceedings introduces
`a strong element of prejudice against the Petitioner.
`Continuing, Patent Owner argues the Board erred in evaluating
`whether good faith was shown. Request 8–10. According to Patent Owner,
`the Board overlooked the prosecution history of the ’414 patent, where
`Patent Owner allegedly took “corrective action” during prosecution of that
`patent “to narrow its claims” after the conclusion of the 451 IPR. Id. That
`claim amendment, Patent Owner argues, convinced the Examiner to find that
`there was adequate descriptive support in the application’s putative priority
`documents, thus effectively antedating Gwozdz and removing it as an
`available prior art reference. Id. (citing Ex. 1002, 27–28). Thus, Patent
`Owner contends, it had no need at that time to correct the challenged patents
`to reference the JRA. Id.
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`11
`This argument is unpersuasive in establishing that the Board erred.
`To begin, the argument is new and nowhere in the Motion is there any
`reference to the ’414 patent’s prosecution history or any “corrective action”
`taken by Patent Owner as indicative that the omission of the JRA disclosure
`was simply a good-faith mistake. See generally Mot.
`Even considering this new argument, it is flawed. That Patent Owner
`may have tried to narrow the claims in the ’414 and ’786 patents6 to avoid
`Gwozdz as prior art says nothing about the challenged ’546 patent, which is
`the direct parent of the patent in which the claims were held unpatentable
`over Gwozdz in the 451 IPR.7 In addition, insofar as the Examiner
`apparently credited Patent Owner’s amendment of some claims and
`entitlement of those claims to an earlier priority date, the then-Acting
`Director found the Examiner’s “conclusion directly contradicts” the holding
`in the 451 IPR, raising concerns of “material error” and referring the cases to
`the Board for decisions on institution. Padagis US LLC v. Neurelis, Inc.,
`IPR2025-00465, Paper 12 at 3 (Acting Director Stewart, July 16, 2025)
`(informative). Upon referral, we determined that the allegedly narrowed
`claims of the ’414 and ’786 patents did not find adequate written description
`support in the relevant priority applications or avoid Gwozdz as prior art.
`
`6 As noted in the Decision, the applications that issued as the ’414 and ’786
`patents were filed after the Board’s Final Written Decision in the 451 IPR
`and while the appeal to the Federal Circuit was pending. Decision 8–9.
`7 In the Request for Rehearing in IPR2025-00464, Patent Owner contends
`that we “overlooked the import of the Statutory Disclaimer” (Ex. 2075) filed
`on the ’546 patent. IPR2025-00464, Paper at 8. We cannot have overlooked
`evidence that is not cited in the Motion and, indeed, did not exist at the time
`the Motion was filed. Ex. 2075 (disclaimer filed January 2, 2026).
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`12
`See Decision 8 n.6 (citing Paper 13, 14–30). And finally, Patent Owner
`could have sought to amend the claims and correct the specifications to
`reference the JRA to address the concerns with Gwozdz being asserted
`against its portfolio of related patents, before those patents became the
`subject of new infringement allegations by Patent Owner and the present
`obviousness challenges raised by Petitioner. Those options for Patent
`Owner were not mutually exclusive. Patent Owner pursued claim
`amendment (for some claims) yet for years neglected to seek a correction to
`add disclosure of the JRA—only pursuing that option for the first time after
`these proceedings were well underway.
`Patent Owner contends the facts here are similar to those in CSIRO,
`where petitioner argued in 2020 that patent owner should have amended the
`specification in 2006 when art that patent owner later sought to exclude was
`first cited during prosecution. Request 10 (citing CSIRO, Paper 21 at 1–2).
`But, unlike here, in CSIRO there was no argument that patentee’s delay in
`pursuing a correction of the specification substantially prejudiced petitioner.
`See Opp. 1. As discussed above, the requested certificate in CSIRO was
`only marginally relevant to the grounds raised by petitioner, and the
`prejudice issues in CSIRO versus here have little in common.
`C. Alleged Errors in the Prejudice Inquiry
`Patent Owner contends that the Board’s prejudice analysis was
`improper, not determinative, and that the Board overlooked the prejudice to
`Patent Owner. Request 10–13. We disagree on all points.
`According to Patent Owner, the applicable statute and regulations
`make no reference to consideration of prejudice in evaluating whether a
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`13
`motion for leave should be granted. Id. at 10–11. Even so, the Board has
`long considered prejudice to the parties in deciding such motions, and the
`Federal Circuit has endorsed the same. See Kingston Tech. Co. v. CATR
`Co., Ltd., IPR2015-00559, Paper 44 at 3 (PTAB Nov. 6, 2015) (denying
`patent owner’s motion for leave to file a request for certificate of correction,
`citing a patent owner’s delay in seeking to correct certain claim language
`and the unfairness to petitioner if the changes were allowed); Honeywell,
`939 F.3d at 1350 (instructing the Board to permit the filing of a motion for
`leave (which permission the Board earlier refused) and indicating that the
`Board may consider prejudice to petitioner when evaluating that motion).
`Patent Owner argues that prejudice to Petitioner should not be
`determinative because it was Petitioner that chose to rely on Gwozdz as its
`sole primary reference for its obviousness grounds. Request 11–12 (citing
`another panel decision that weighed prejudice differently, finding prejudice
`to patent owner outweighed prejudice to petitioner, and notwithstanding a
`potential statutory bar against any future challenge by petitioner). This
`argument elides important context concerning the history of the 451 IPR, the
`subsequent Federal Circuit appeal, and Patent Owner’s many years of delay
`in pursuing any certificate of correction to add the JRA disclosure, which we
`addressed in detail in our Decision. Decision 8–12 (agreeing with Petitioner
`that it reasonably relied on this history and Patent Owner’s many years of
`silence when it prepared its petition asserting Gwozdz). How another panel
`may have weighed the prejudice issues on a different record does not control
`our assessment of the issue.
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`14
`Patent Owner contends that the Board’s concerns about prejudice
`appear to be rooted in “perceived gamesmanship.” Request 12. We never
`said that. To the contrary, the concern here is that Patent Owner’s years of
`delay and inaction result in unfair prejudice to Petitioner now if Patent
`Owner is allowed to add the JRA disclosure to the challenged patents.
`Patent Owner was in the best position to know about the JRA (signed in
`2007) and, if it believed the JRA provided a safe-harbor defense against an
`obviousness challenge based on Gwozdz, to have promptly corrected its
`patents that are, without the correction, susceptible to that challenge. But
`Patent Owner did not do so, even after the 451 IPR was filed or during the
`roughly seven years that followed. Decision 8–12.
`Patent Owner argues that we overlooked that it will be prejudiced if
`relief is denied because Patent Owner will be deprived of the safe harbor
`defense under Section 103(c)(2). Request 13. We considered the prejudice
`to Patent Owner. But such prejudice arises first and foremost from Patent
`Owner’s own delay and inaction as already explained. In that light, the
`unfair prejudice to Petitioner substantially outweighs any countervailing
`prejudice to Patent Owner. Decision 11–12 (explaining that an opportunity
`to file a reply brief would do little to remedy the prejudice to Petitioner now
`that it is time-barred from raising any new grounds of unpatentability or
`filing any new challenge that is not reliant on Gwozdz).
`Patent Owner’s remaining criticisms about our prejudice analysis fare
`no better in demonstrating reversible error. Request 14–15. Patent Owner
`contends that the relief it is requesting would not affect scheduled deadlines
`in the case. Id. at 14. That may be true, but it does not mitigate the
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`15
`prejudice to Petitioner as already explained if relief is granted. And, to the
`extent Patent Owner is suggesting the Board is attempting to apply a form of
`preclusion or “estoppel-lite” by referencing the 451 IPR and the subsequent
`affirmance by the Federal Circuit in that case, Patent Owner is mistaken. Id.
`at 14–15. We highlighted that history to reinforce that Patent Owner has
`been on notice since at least 2019 that nearly identical claims were exposed
`to a Gwozdz-based obviousness challenge. Had Patent Owner moved
`promptly in 2019 to correct its patents with a disclosure of the JRA, it is
`possible the entire 451 IPR might have been avoided or at least summarily
`resolved. But Patent Owner did not do so. Instead, it delayed making any
`request for correction over the ensuing seven years. That long and
`unexplained delay weighs heavily against granting leave to pursue correction
`at this stage.
`
`IV. ORDER
`For the foregoing reasons, it is:
` ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`IPR2025-00464 (Patent 8,895,546 B2)
`IPR2025-00465 (Patent 11,241,414 B2)
`IPR2025-00466 (Patent 11,793,786 B2)
`
`16
`FOR PETITIONER:
`
`James Murphy
`Corey Casey
`POLSINELLI PC.
`jpmurphy@polsinelli.com
`ccasey@polsinelli.com
`
`
`FOR PATENT OWNER:
`
`Michael A Sitzman
`Timothy Best
`MCDERMOTT WILL & EMERY LLP
`msitzman@mwe.com
`tbest@mwe.com
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`Raymond Miller
`Nancy Stakleff
`DLA Piper LLP (US)
`raymond.miller@us.dlapiper.com
`nicole.endejann@us.dlapiper.com
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