Short Summary
Headwater Research files a response to Samsung’s request for rehearing, defending the PTAB’s denial of institution and the recission of the Vidal Memo. The brief argues that discretionary denial is statutory and that Samsung should have foreseen the rescission.
Detailed Summary
In a detailed response to Samsung Electronics’ request for rehearing, Headwater Research LLC argues that the PTAB’s recission of the Vidal Memo was proper because the memo constituted an improperly promulgated substantive rule. The patent owner contends that the recission does not violate the change‑in‑position doctrine and that Samsung should have anticipated the possibility of institution being rescinded, thus bearing any prejudice. Moreover, Headwater emphasizes that discretionary denial of institution is expressly authorized by 35 U.S.C. § 314(a) and mandated by congressional intent, and that the Board’s guidelines are clear, non‑vague, and constitutionally sound.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before local courts. Understanding the court's reasoning in Samsung Electronics Co., Ltd. et al. vs Headwater Research LLC is valuable context for structuring arguments or assessing risk in similar proceedings.
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