Can the PTAB cite prior art outside the grounds that started an inter partes review? IN RE: IPR LICENSING

The owner of a patent is granted the exclusive right to make, use, sell and import the invention claimed in the patent. To be granted a patent in the United States an inventor must submit a patent application to United States Patent and Trademark Office. The patent application will be reviewed by an examining attorney at the United States Patent and Trademark Office. The examining attorney will review the patent application ensure that the invention described in the patent application meets all the criteria for a patented to be granted. One of the tasks that an examining attorney performs is to review prior art. Prior art is information that has been made available to the public in any form before a given date that might be relevant to the invention described in the patent application.

If an invention has been described in the prior art or would have been obvious based on the prior art, then the examining attorney will give the patent applicant an opportunity to amend the patent application so that prior art is not claimed. If no relevant prior art is discovered or the patent applicant is able to modify the claims of the patent application to satisfaction of the examining attorney then the patent can be granted.

After a patent is granted, if a member of the public discovers prior art which would render a patented invention obvious, that member of the public can request an inter partes review of the patent. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103. When a petitioner requests an inter partes review, they may submit several grounds to justify the inter partes review. Each ground must cite evidence and explain how the evidence is relevant. The evidence that can be submitted is limited to patents or printed publications which would qualify under §§ 102 or 103 and expert testimony to explain those publications. Institution of an inter partes review is not automatic, a petitioner must demonstrate a likelihood they would prevail with respect to at least one claim challenged. Once the inter partes review is initiated, it is limited to the grounds on which the inter partes review was granted, outside evidence is excluded.

IN RE: IPR LICENSING, INC., 2018-1805 (C.A.F.C. 2019) is a case which illustrates the importance of including as much relevant prior art as possible when formulating the grounds for an inter partes review. This case centers around U.S. Patent 8,380,244 (“the ’244 patent”) which relates to a method of choosing the best wireless network for a mobile device.

The case began in 2014 when ZTE filed a petition for inter partes review challenging claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the ’244 patent on three grounds. Ground one challenged all claims, based on a combination of Jawanda, GPRS, and IEEE 802.11. Ground two challenged all claims, based on a combination of U.S. Patent No. 6,681,259 (“Lemiläinen”), GPRS, and IEEE 802.11. Ground three challenged all claims, based on a combination of Lemiläinen and UMTS. The Patent Trial and Appeal Board instituted review on ground one and, citing redundancy, denied institution on grounds two and three.

There were several Board decisions which were appealed by IPRL. Ultimately, the Board concluded that all challenged claims were obvious in view of Jawanda, GPRS, and IEEE 802.11 – except for claim 8. With respect to claim 8 the Board found that UMTS in combination with other cited prior art would have rendered the claim obvious. IPRL appealed that decision to the Court of Appeals for the Federal Circuit on the basis that UMTS was not cited in the grounds on which the inter partes review was instituted.

The Federal Circuit noted that the Board’s regulations state an issue upon which the Board does not institute review is not part of the ensuing inter partes review proceeding. The patent holder does not have an opportunity to be heard on a non-instituted ground nor does the patent holder have notice that the Board may rely on a non-instituted ground in its final decision. The Federal Circuit held that the Board’s decision was not supported by substantial evidence because UMTS was not part of the grounds on which the inter partes review was instituted and reversed the Board’s decision with respect to claim 8.

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