Federal Circuit lacks jurisdiction to review PTAB determinations on whether assignor estoppel precludes institution of IPR; incorporation by reference includes what a skilled artisan understands from the incorporated disclosure

Husky Injection Molding Systems v. Athena Automation Ltd., Nos. 2015-1726 and 2015-1727 (Fed. Cir. Sept. 23, 2016)

The Patent Trial and Appeal Board (PTAB) instituted an inter partes review proceeding over the patent owner’s argument that the assignor estoppel barred the petitioner from filing the petition. The PTAB further determined that certain claims of the patent-at-issue were not anticipated because a first reference was not clear about what it intended to incorporate by reference to another application. 

As to the assignor estoppel, the patent owner argued that the petitioner was in privity with the co-inventor of the patent-at-issue. The Federal Circuit concluded that 35 U.S.C. § 314(d) excludes review of the PTAB’s decision to institute relating to the assignor estoppel. A decision to institute over an assignor estoppel challenge is not related to the PTAB’s ultimate authority to invalidate a patent. Therefore, that decision is not reviewable. 

As to incorporation by reference, the Federal Circuit vacated the PTAB and remanded for finding of no anticipation. Even though the prior art cited against the patent did not disclose all of the claim elements, it incorporated by reference another patent that included the missing claim elements. The PTAB did not consider the incorporated material, but the court found that a reasonably skilled artisan would have understood the material that was incorporated despite the use of different terms in the incorporated document.