Federal Circuit says PTAB decision on redundancy of asserted IPR grounds not appealable

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85-4. Federal Circuit Affirms it Lacks Jurisdiction to Review USPTO’s Denial of “Redundant” IPR

Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 U.S. App. LEXIS 3727 (Fed. Cir. Mar. 1, 2016) (Before Dyk, Bryson, and Wallach, J.) (Opinion for the court, Bryson, J.). Click Here for a copy of the opinion.

In a March 1, 2016 opinion, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decision in IPR2013-00252 and addressed several highly debated issues surrounding redundant grounds for review.

Harmonic asserted that claims 1-20 of Avid’s video compression patent were invalid on seven different grounds.  The PTAB instituted trial on claims 1-16, and declined to review those claims on four proposed grounds, finding that they were redundant.  Ultimately, the PTAB found claims 1-10 unpatentable as obvious in view of certain prior, and found claims 11-16 patentable over that prior art.  Harmonic appealed, arguing that claims 11-16 are unpatentable and that the PTAB failed to reconsider the arguments previously deemed redundant.

federal-circuit-cafc-5aThe Federal Circuit held, pursuant to 35 U.S.C. § 314(d), that it does not have jurisdiction to review an institution decision, because a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  The PTAB’s decision on the redundancy of Harmonic’s asserted grounds for review constituted a portion of the Institution Decision and was therefore unappealable, absent some other appealable question.  The Court went on to find substantial evidence supporting the PTAB’s determination that claims 1-16 are valid, because the prior art failed to teach a limitation requiring data to be provided at a “predefined period of time.”



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