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IPR Institution Limited By the Petition, But Not Limited as to the Express Teachings of the Prior Art

In an appeal from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit held that although the PTAB erred by instituting review based on a ground not advanced in the petition, the PTAB correctly found the patent at issue was invalid and affirmed the final written decision. Koninklijke Philips N.V. v. Google LLC, Case No. 19-1177 (Fed. Cir., Jan. 30, 2020) (Prost, C.J.).

This dispute began when petitioner Google filed a petition for inter partes review (IPR) for one of Philips’s patents. In its petition, Google asserted two grounds of invalidity: (i) almost all claims were anticipated by a reference referred to as SMIL 1.0; and (ii) all claims are obvious in view of SMIL 1.0 and the general knowledge of a person of ordinary skill in the art. To support its arguments that the claims were obvious in view of the general knowledge of a person of ordinary skill in the art, Google cited an expert declaration and a reference referred to as Hua. Notably, Hua was not directly used as a ground for invalidity.

The PTAB ultimately instituted review on three grounds. The first two grounds were those presented in Google’s petition, and the third was that the claims were obvious over SMIL 1.0 and Hua. In its final written decision, the PTAB found the claims were invalid as obvious over SMIL 1.0 in view of the knowledge of a person of ordinary skill in the art and invalid as obvious over SMIL 1.0 and Hua. Philips appealed.

Starting with the Board’s institution decision, the Federal Circuit held the PTAB erred by instituting review on a ground not included in Google’s petition—the combination of SMIL 1.0 and Hua. In its analysis, the Court relied heavily on the Supreme Court’s SAS v. Iancu decision. (IP Update, Vol. 22, No.12) There, the Supreme Court explained that the IPR statute envisions that the IPR is guided by the petition, where the petition describes “‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’”  Thus, the decision whether to institute to review must be made pursuant to the petition and is entirely binary, meaning the petition is granted  in its entirety or is denied.

Following this reasoning, the Federal Circuit found the PTAB could only grant review on the grounds raised in the petition. In other words, “the PTAB does not “[enjoy] a license to depart from the petition and institute a different inter partes review of his own design.”  Accordingly, the Court found the Board erred by granting review on this ground.

Notwithstanding this error, the Federal Circuit concluded that the PTAB correctly found all claims were obvious over SMIL 1.0 and the general knowledge of a person of ordinary skill in the art. Although the knowledge of a person of ordinary skill in the art is not expressly stated in the IPR statute (which limits the scope of prior art to patents and printed publications), such knowledge is nevertheless important to determine obviousness. The Court noted that whether a claim is obvious necessarily depends on the knowledge of a person of ordinary skill in the art. Therefore, it is proper for the PTAB to rely on such knowledge when determining whether a claim is invalid as obvious. Applying this standard to the present claims, the Court found substantial evidence supported the PTAB’s final written decision and affirmed.

Practice Note: This decision reemphasizes the important of the grounds advanced in an IPR petition. Petitioners are advised to ensure that they expressly include each ground of invalidity for the challenged claims in the petition, as they will be precluded from arguing additional grounds of invalidity.

Gilbert Smolenski, a law clerk in the Washington, DC, office, authored this article.

© 2020 McDermott Will & Emery


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