Patents - May 06, 2016

Inter partes review 5: Redundancy

In our fourth story on inter partes review (IPR) we discussed Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., ___ F.3d ___, 2016 WL 1128083 (Fed. Cir. March 23, 2016). In addition to illustrating the standard of evidence applied in such proceedings, the United States Court of Appeals for the Federal Circuit held that it lacks the power to review decisions of the Patent Trial and Appeal Board (PTAB) to grant petitions for IPR on some grounds but not others.

The court decided, on appeal by Shaw, that “[w]e have no authority, however, to review the Board’s decision to institute IPR on some but not all grounds” and thus “[w]e thus lack jurisdiction to review the Board’s decision not to institute IPR on the Payne-based ground, which includes its decision not to consider the Payne-based ground in its final written decision.”  The reason is that the court lacks jurisdiction to “review the Board’s decisions instituting or denying IPR.”

The court was not happy with the way the PTAB made its decision because the PTAB did not make any specific findings that the ground was “redundant” of the other two grounds and the PTAB’s decision did not make the proceeding more efficient, “particularly given that the Payne-based ground was alleged anticipation by a single reference while the two instituted grounds were alleged obviousness over combinations of references.”

The court had “no authority, however, to review the Board’s decision to institute IPR on some but not all grounds” because “‘[d]enial of a ground is a Board decision not to institute inter partes review on that ground.’  37 C.F.R. §42.108(b).”

Shaw also petitioned for a writ of mandamus to have the Payne-based ground considered if its appeal failed.  “Shaw’s argument is predicated on its concern that the statutory estoppel provisions would prevent it from raising the Payne-based ground in future proceedings.”  In brief, the court denied the writ because the statutory estoppel of 35 U.S.C. § 315(e) did not apply.  That statute reads as follows: “[t]he petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a [proceeding before the Office, a civil action under 28 U.S.C. § 1338, or an International Trade Commission proceeding] with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  The word “during” in the statute was key because “Shaw did not raise—nor could it have reasonably raised—the Payne-based ground during the IPR” even though it did in its petition for an IPR.

The court concluded: “[t]he plain language of the statute prohibits the application of estoppel under these circumstances.  In light of our construction of the statute, mandamus is not warranted.”