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Relying on Outside Prior Art in an IPR – Not so fast!

The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds during Inter Partes Review (IPR) proceedings. In re IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. Nov. 22, 2019).  An IPR begins when a petitioner submits a petition presenting one or more grounds that certain claims of a patent are invalid, where each discrete ground includes arguments and evidence purporting to show invalidity of the challenged claims of a patent. The Board may then institute a review and consider the evidence on those grounds.  Importantly, the scope of the IPR is defined by the petition.

When deciding the validity of a claim on one ground, is it proper for the Board to rely on evidence presented only in a different (in this case non-instituted) ground? The CAFC addressed this issue and decided in the negative: “The Board … cannot rely on evidence relating solely to grounds on which it never instituted.”

The Court reasoned that allowing the Board to rely on evidence from other non-instituted grounds would unfairly disadvantage patent owners because they would not have the opportunity to rebut or anticipate the evidence that would be used against them. Citing In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016), the Court reminded the Board that it “must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.”  Thus, any decision that relies on other evidence is erroneous.  The CAFC’s citation to Magnum Oil reinforces the point that the Board should not be entertaining new arguments and evidence relating to a ground that were not made in the petition, even if similar arguments and evidence were made in the petition related to other instituted or non-instituted ground.

In light of the recent SAS Institute decision, the specific situation that occurred in In re IPR Licensing is unlikely to occur again because the procedure of litigating IPRs has changed. As we explained in more detail previously, because the Board will now institute IPR petitions on all grounds if it decides to institute, there cannot be any non-instituted grounds alongside instituted grounds as had occurred in In re IPR Licensing. However, the Court’s holding is still an important reminder that the Board’s decisions must be confined to the evidence and arguments actually presented in the petition. It is therefore important that petitioners include all the evidence and arguments for each ground that they need to rely on in the petition at the first instance, and that patent owners diligently police any attempt by petitioners to incorporate arguments into one ground that were only made in other grounds.

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About this Author

Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked as a database...

Kristina Cary, Patent Litigator, Mintz Boston Law firm

Kristina is a patent litigator and trial attorney who concentrates primarily in hardware and software matters in Section 337 investigations before the International Trade Commission (ITC). She brings extensive training and industry background in electrical and computer engineering to her practice, which focuses on highly technical aspects of patent litigation, including patent portfolio analysis and patent infringement and validity analyses.

Kristina has acted as the technical lead for multiple patents in complex patent litigation at the ITC adverse to some of the largest technology companies in the world. During these investigations, she has examined witnesses at trial, deposed scores of fact and expert witnesses, coordinated extensive multinational discovery, and managed large teams of technologists and litigators. She works closely with industry experts throughout all phases of litigation and related diligence. Kristina also represents clients in patent infringement cases in federal district courts.

Kristina has broad industry experience in hardware and software engineering, gained from her work at several technology companies and as an independent consultant. She applies this technical knowledge in representing her clients, both in litigation and in providing strategic counseling to help clients protect and leverage IP rights.

Kristina is an active member of IEEE.

Serge Subach, Mintz Levin Law Firm, Boston, Intellectual Property Attorney

Serge’s intellectual property practice focuses on patent litigation. His experience spans broad technical fields including software, consumer electronics, and medical devices.

Before joining Mintz Levin, Serge worked for TomTom, Inc., where he interfaced between product management and engineering departments in coordinating beta testing of both software and hardware products.

During law school, Serge served as President of the Intellectual Property Law Association and as Managing Business Editor of the New England...