April 5, 2016

We’ll Say it Again: Redundancy is not Reviewable

By Bryan K. Wheelock, Principal

In HP Inc., v. MPHJ Technology Investments, LLC, [2015-1427] (April 5, 2016) the Federal Circuit affirmed the PTAB Final Written Decision in IPR2013-00309, agreeing that all but one challenged claim (claim 13) of U.S. Patent 6,771,381 was anticipated, and holding that it cannot review the Board’s decision not to review that claim as obvious, on redundancy grounds.

The Federal Circuit noted that under 35 U.S.C. § 314(d), the determination by the Director whether to institute an Inter Partes Review shall be final and nonappealable.  The Board rejected HP’s arguments, including that 314(d) only barred review of findings under 314, namely where there is a reasonable likelihood that petitioner would prevail;  that § 314(d) does not bar review of whether the Board has properly construed the scope of its authority; that the Board lacks authority to grant review on only a subset of properly presented grounds; that the Board did not fulfill its obligations under the APA; and finally that the Board did not adequately explain redundancy.

All is not lost for HP, however, as the Federal Circuit repeated its statement from its recent Shaw decision that estoppel does not apply to grounds that are not instituted, and thus “HP is not estopped from raising the obviousness of claim 13 in a subsequent court or Board proceeding, and a challenger cannot assert that the nonobviousness of claim 13 was resolved by the Board in this proceeding.”