HP Inc. ("HP") instituted an inter partes review ("IPR") against MPHJ Technology Investments ("MPHJ") at the Patent Trial and Appeal Board ("the Board") on fourteen claims of one patent. HP asserted seven grounds of anticipation and one ground of obviousness. The Board instituted three of the anticipation grounds, excluding the other grounds as redundant. The Board found thirteen of the fourteen claims unpatentable as anticipated, and a single claim "not unpatentable." The Federal Circuit upheld the Board's decision because (1) the findings were supported by "substantial evidence" and (2) the Board's decision whether or not to institute grounds are not subject to judicial review. The Federal Circuit rejected each of HP's arguments challenging the Board's refusal to institute review on certain grounds for redundancy.
First, the Federal Circuit, citing Achates Reference Publishing v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2014), decided that 35 U.S.C. § 314(d) bars judicial review of certain PTAB decisions concerning the institution of IPRs, including redundancy findings.
Second, the Federal Circuit rejected HP's argument that a review of the scope of the Board's institution authority was conducted in Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). The Federal Circuit noted that in Versata, the Board's decision under review (in relevant part, whether the patent was a Covered Business Method ("CBM")) would ultimately affect whether the Board could adjudicate the validity of the patent in suit at all with respect to any petitioner. Here, the Federal Circuit reviewed whether just one petitioner (HP) could invalidate the patent at issue. The Federal Circuit ruled that "[t]he refusal to institute review on the basis of redundancy does not impact the Board's authority to find a claim unpatentable," it simply makes that ground unavailable to one specific petitioner. Thus, the holding in Versata does not apply to the Board's finding of redundancy.
Third, HP argued that the Board erred in failing to issue a final written decision covering all claims and all grounds properly presented in the petition for review. The Federal Circuit cited Harmonic Inc. v. Avid Tech., Inc., No. 15-1072 (Fed. Cir. Mar. 1, 2016) and Synopsys, Inc. v. Mentor Graphics Corp., No. 14-1516 (Fed. Cir. Feb. 10, 2016) to reach its conclusion that the PTAB's final written decision need not address grounds on which it chose not to institute.
Fourth, HP argued that the Board failed to fulfill its obligations under the Administrative Procedure Act ("APA") because it did not address all grounds presented in the petition in its final decision. The Federal Circuit held that under the APA, the Board is required to address only those matters implicated in the merits phase of the IPR proceeding. Here, the final decision addressed each of the grounds instituted; accordingly, the Board met its APA obligations.
Fifth, HP argued that the Board did not sufficiently articulate its reasons for finding redundancy under the APA. The Federal Circuit held that § 314(d) prevents judicial review of the Board's reason for determining whether certain grounds are redundant. Any holding to the contrary would "eviscerate" § 314(d) because it would allow for a substantive review of the institution of an IPR.
Finally, the Federal Circuit articulated that estoppel under 35 U.S.C. § 315(e)(1) does not apply to non-instituted grounds because those grounds do not become part of the IPR proceedings.
To view the Court's Opinion, please click here.
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