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March 31, 2016Newsletter

This Week at the Board - March 31, 2016

Federal Circuit Reiterates that It Has No Authority to Review PTAB’s Decision to Institute on Some but Not All Grounds

In a recent Federal Circuit case decided on March 23, 2016, the Petitioner (Shaw Industries Group, Inc.) of an IPR argued that the Federal Circuit has the authority to review the PTAB’s decision to label some of a Petitioner’s grounds as redundant and to not institute an IPR on those grounds. The Petitioner asserted it was only asking the Federal Circuit to review the PTAB’s authority to make such a determination and that whether the PTAB can deem grounds redundant is not a decision on whether to institute. The Federal Circuit disagreed, reiterating that it does not have the authority to review any such decision regarding institution of an IPR. The Petitioner also petitioned for a writ of mandamus in the case, arguing that because redundancy was raised in the Petition, the Petitioner may now be estopped from arguing the ground in any future proceedings. The Federal Circuit noted, however, that §315(e) should not estop the Petitioner from using the ground in a subsequent proceeding, because the ground was never actually part of the instituted IPR, and it could never have reasonably been raised during the IPR.

A link to the decision is provided here.

PTAB Grants Patent Owner’s Request for Rehearing Based on Clear Error, Denies Based on Claim Construction and Prior Art Interpretation

On March 21, 2016, the PTAB granted part of a Patent Owner’s (Ameranth, Inc.) request for rehearing on an institution decision based on the fact that the Board erroneously instituted trial on an independent claim that was not challenged in the Petition for CBM Patent Review. However, in the same decision, the Board denied the Patent Owner’s request for rehearing of the institution decision on the basis of improper claim construction and interpretation of prior art. This case is yet another example of the Board’s unwillingness to grant requests for rehearing of institution decisions unless there is a clear and easily identifiable error.

A link to the decision is provided here.

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