Federal Circuit Lacks Authority to Review Denial of Institution of IPR on Some, but Not All, Raised Grounds

Mar 30, 2016

Reading Time : 2 min

Shaw petitioned for IPR of all claims of a patent owned by Automated Creel and raised three grounds of invalidity, including anticipation in view of the Payne reference. The PTAB instituted IPR of all claims, but did not institute IPR on the basis of the Payne reference. In its decision instituting IPR, PTAB stated that it denied instituting IPR on the basis of the Payne reference because it was redundant of the other two grounds on which IPR was instituted. Shaw sought review of PTAB’s redundancy decision and argued that the Federal Circuit does have jurisdiction to review PTAB’s authority in deeming a subset of invalidity grounds redundant of the instituted grounds.

In denying a portion of Shaw’s petition for IPR as redundant, PTAB did not consider the substance of the Payne reference or compare it to the other two grounds of invalidity proposed by Shaw. Nor did it make any findings of overlap among the three grounds raised by Shaw. Instead, PTAB merely denied the IPR based on the Payne reference as redundant without specific explanation. Although the court was troubled by PTAB’s lack of specific findings with respect to its conclusion of redundancy, the court held that it lacked authority to review PTAB’s decision to institute IPR on some, but not all, grounds. It reasoned that, under 37 C.F.R. § 42.108(b), denial of a ground is a PTAB decision not to institute IPR on that ground and that, under 35 U.S.C. § 314(d), it lacks jurisdiction to review a PTAB decision not to institute IPR on a particular ground.

Judge Reyna wrote separately to address PTAB’s “unprecedented” “unchecked discretionary authority.” At oral argument, the Patent and Trademark Office argued that PTAB does not have to provide any basis for its institution decisions because the director has complete discretion to deny institution. Judge Reyna took exception with PTAB’s unfettered authority and lack of accountability. He urged that PTAB is subject to the Administrative Procedures Act, which requires “reasoned decision making” for agency adjudications. Judge Reyna would require the PTAB to state its findings and conclusions, and the reasons or bases for those findings and conclusions, and not to provide simply a conclusory statement that additional grounds of invalidity are redundant.

Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 2015­1116, ­1119 (Fed. Cir. Mar. 23, 2016). [Moore (opinion), Reyna (concurring), Wallach]

Share This Insight

Previous Entries

IP Newsflash

September 16, 2024

The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact.

...

Read More

IP Newsflash

September 9, 2024

The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective filing date. In so doing, the court confirmed that, despite changes to the text of § 102, the AIA did not undo long-settled pre-AIA precedent that the on-sale bar applies when, before the critical date, a party sells products secretly made using a patented process.

...

Read More

IP Newsflash

September 5, 2024

The Patent Trial and Appeal Board exercised its discretion under General Plastic to deny institution of a follow-on petitioner’s request for inter partes review despite determining that the petitioner did not have a “significant relationship” with a previous petitioner that had challenged the same patent. The PTO Director vacated the board’s decision, holding that “where . . . the first and second petitioners are neither the same party, nor possess a significant relationship . . . General Plastic factor one necessarily outweighs the other . . . factors.”

...

Read More

IP Newsflash

August 28, 2024

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the PTAB ruled that images of a boot design taken from a website after the critical date, coupled with evidence that the design was on sale before the critical date, was insufficient to establish the design as prior art. Critical to the PTAB’s determination was the fact that webpages are “dynamic” and change over time, rendering images taken from the current webpage insufficient to establish prior disclosure.

...

Read More

IP Newsflash

August 21, 2024

The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had filed a second amended complaint, but then voluntarily dismissed the case without asking the district court to vacate its prior invalidity ruling, which it also never appealed. The Federal Circuit held that the initial invalidity order was interlocutory when issued but merged with the voluntary dismissal with prejudice, making the invalidity determination final and the present appeal moot.

...

Read More

IP Newsflash

August 21, 2024

The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation.  On review from the denied institution, the Director explained that a drawing may be relied upon for what it clearly shows, vacating and remanding for a determination of whether the reference is clear on its face or reasonably would have suggested the limitation in view of the supporting expert testimony.

...

Read More

IP Newsflash

August 13, 2024

In a case it described as “‘a prime example’ of when ODP does not apply,” the Federal Circuit recently reversed a decision from the District of Delaware that invalidated a claim for obviousness-type double patenting (ODP), holding that a first-filed, first-issued, later-expiring claim cannot be invalidated for ODP based on a later-filed, later-issued, but earlier-expiring claim from the same family. In so doing, the court answered the question of whether a later-filed, later-issued patent in the same family can be an ODP reference against the first application in the family—it cannot. The court also clarified the scope of its prior ruling in In re Cellect, explaining that case answered a different question—the question of what expiration date should be used for an ODP analysis.

...

Read More

IP Newsflash

August 6, 2024

The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds of unpatentability in the petition.

...

Read More

© 2024 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.