PTAB IPR Ruling on Redundancy and One-Year Time Bar are Not Appealable

cafc-federal-circuit-335z copyShaw Indus. Grp. v. Automated Creel Sys. (Fed. Cir. Mar. 23, 2016) (Before Moore, Reyna, and Wallach, J.) (Opinion for the court, Moore, J.). Click Here for a copy of the opinion.

Shaw Industries filed two petitions for Inter Partes Review (IPR) of a patent owned by Automated Creel (ACS) on a technology related to carpet manufacturing.  The first petition asserted fifteen grounds of unpatentability.  The Board instituted an IPR on three of the proposed grounds, and denied the other ground as redundant.  The second petition asserted six grounds of unpatentability. The Board instituted an IPR on two of the proposed grounds, and again dismissed the remaining grounds as redundant.  ACS argued that Shaw was barred from bringing the second IPR, because it was filed more than one year after ACS sued Shaw in district court for patent infringement.  The Board rejected the argument, because ACS had voluntarily withdrawn the complaint without prejudice.  The Board reasoned that a voluntary dismissal without prejudice nullifies the effect of the complaint in applying the one-year IPR bar. The Board consolidated the two IPR’s, and issued a single written decision, finding that Shaw had shown that a first group of claims was unpatentable, but failed to do so on a second group of claims.  Both sides appealed.

Shaw appealed the Board’s decision to deny certain IPR grounds as redundant.  It argued that this was part of the decision to institute the IPR, which gave the Federal Circuit authority to review the finding of redundancy.  The Court rejected that theory, and affirmed that a denial to institute proceedings on one or more grounds is a decision not to institute – and thus is not appealable.  Alternatively, Shaw petitioned for a writ of mandamus to require the Board to explain its redundancy findings, and to institute an IPR on certain grounds.  Shaw argued that such a writ was appropriate because it had no other remedy, and the estoppel provisions of the IPR statute would prevent it from raising the denied grounds in later litigation for no other reason than they were “redundant.”  The Court again rejected Shaw’s theory, reasoning that the IPR statute only estops petitioners from raising grounds of unpatentability that they “raised or could have raised during that [IPR],” which refers only to those grounds on which an IPR was instituted.  Accordingly, Shaw is not estopped from raising the denied grounds in later litigation, and the Court declined to issue a writ of mandamus.


ACS challenged the Board’s decision that Shaw was not barred from bringing the second IPR because the petition was filed more than one year after a complaint for infringement was served on Shaw. It argued that the decision of the Board not to apply the one-year bar was a matter of statutory interpretation reviewable by the Federal Circuit, and not a decision whether to institute an IPR.  The court disagreed, and held that it had no authority to review the Board’s application of the one-year bar.  In dicta, the Court suggested that while voluntary dismissal without prejudice may undo the effect of the lawsuit, it may not undo the effect of service of a complaint, which triggers the one-year time bar.  But the issue was not properly before the court.

On the merits, the Court reversed the Board’s finding of unpatentability with respect to all but one of the first group of rejected claims.

Judge Reyna filed a concurring opinion voicing concerns about the Board’s ability to deny institution because certain grounds are “redundant.”  Specifically, while the AIA does confer non-appealable discretion upon the USPTO in deciding whether to institute IPR’s, the Administrative Procedure Act still requires that federal agencies provide a reason for their actions.  Further, while Judge Reyna agrees that the estoppel provisions do not apply to un-instituted grounds, she reasons that the issue was not properly before Court, and thus petitioners unfairly face uncertainty as to the estoppel consequences of filing a petition.

NOTE: Also contributing to this summary were Parker Hancock and Puja Dave.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

One comment so far.

  • [Avatar for Valuationguy]
    April 4, 2016 03:19 pm

    If I am reading this correctly….the CAFC panel in its dicta clearly indicated that the filing of the infringement suit by ACS served as the starting time for the one-year period of notification allowing for IPR’s regardless of whether the suit was later withdrawn…however, it appears that the panel applied current CAFC precedence to say that even though the PTAB violated its statutory mandate in instituting the second set of IPR against its own procedures…there was nothing that the CAFC can do to reverse it.

    Funny how that works…to again screw patent owners.