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IP Alert
IP Alert: PTAB’s Decision to Institute IPR on Fewer Than All Grounds Raised in Petition Not Reviewable

March 3, 2016

On March 1, 2016, in Harmonic Inc. v. Avid Tech. Inc., a unanimous panel of the U.S. Court of Appeals for the Federal Circuit held that the decision of the Patent Trial and Appeals Board (PTAB) to institute an inter partes review (IPR) on only a subset of grounds raised in the petition is an “institution decision” that is not reviewable on appeal, rather than a “case management” decision that might be reviewable. As a practical matter, this confirms that the PTAB is not required to consider every ground of unpatentability raised in a petition for IPR.

In the underlying IPR proceeding, the petition raised seven separate prior art grounds of unpatentability. The PTAB instituted trial with respect to one ground, denied institution of four other grounds that applied to the same claims as the instituted ground as redundant, and denied institution of the remaining two grounds for failing to meet the requisite standard. In its final written decision, the PTAB found some, but not all, of the challenged claims invalid.

The IPR petitioner, Harmonic, argued on appeal that the board’s classification of certain grounds as redundant was a “case management decision,” and therefore reviewable on appeal. The PTAB’s institution decisions are not reviewable on appeal under statute and Federal Circuit precedent. Among other holdings, the Federal Circuit panel disagreed with Harmonic, holding that the board’s decision to institute trial on some but not all grounds is indeed an unreviewable institution decision. The court reasoned that this was true regardless of whether any grounds were denied institution merely for alleged redundancy reasons. The panel further held that the regulations adopted by the U.S. Patent and Trademark Office that permit the PTAB to institute trial on some grounds but not others is valid and consistent with the applicable statutory provisions.

For more information about this decision, please contact Fitch Even partner Paul B. Henkelmann, the author of this alert.

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