In Harmonic Inc. v. Avid Technology, Inc., the Federal Circuit concluded that the PTAB’s practice of denying IPR institution on redundant grounds is appropriate. The Court’s decision is important because it should counsel prospective petitioners to carefully select grounds on which to petition review and offer an explanation in the petition as to why multiple grounds are not redundant.

IPR petitioner Harmonic appealed two aspects of the PTAB’s final written decision in IPR2013-00252. First, Harmonic sought relief from the determination that claims 11-16 of Avid’s U.S. Patent No. 5,495,291 were not shown to be unpatentable. Second, Harmonic sought review of the PTAB’s decision to not revisit grounds of the petition it previously denied as redundant over the instituted ground that subsequently failed on the merits. Harmonic’s appellate strategy stumbled out of the gate, however, as the Federal Circuit determined that it lacks jurisdiction to review the PTAB’s institution decisions.

The more interesting aspect of Harmonic’s appeal of the PTAB’s final decision is the relief sought for the PTAB’s refusal to revisit its decision declining to institute IPR on the four grounds deemed redundant, even after the instituted ground had failed on the merits. The Federal Circuit disposed of this aspect of the appeal on the threshold question of jurisdiction, citing 35 U.S.C. § 314(d) as support for holding that an IPR institution decision is final and non-appealable. The Court went on to explain that, while IPR appeals of final written decisions are reserved exclusively to it (35 U.S.C. § 314(c)), a final written decision will issue only if an IPR has been instituted. The Federal Circuit thus held that it lacked jurisdiction to review institution decisions under the statutory framework.

We have jurisdiction to hear appeals from parties ‘dissatisfied with the final written decision’ from the merits phase. 35 U.S.C. § 141(c). We do not, however, have jurisdiction to review an institution decision.

Turning to the merits, Harmonic sought to invalidate all claims of Avid’s ’291 patent drawn to methods for eliminating interruptions in decompressed video streams, such as might occur when playing an MPEG video file. To avoid the interruptions caused by the rate of decompression failing to keep pace with the rate of display of video data, the Avid claims call for multiple decompression circuits, each with its own buffer for decompressed video data. By controlling which circuit is connected to video output, video interruptions are avoided. Important to this methodology is that the switching of data streams from one circuit to the next occurs after a “predetermined period of time.” Harmonic petitioned for IPR of all 20 claims of the ‘291 patent on seven prior-art grounds, Of the five grounds directed to claims 1-16, the PTAB instituted an IPR on one ground of obviousness, determining that the other four grounds were redundant. IPR was not instituted on claims 17-20, to which the two remaining grounds were directed. Considering the single ground of obviousness, the PTAB held claims 1-10 unpatentable. Focusing on claims 11-16, the PTAB found that the cited references did not disclose or suggest the switching of data streams after a “predetermined period of time” with sufficient particularity. Accordingly, the PTAB held that Harmonic failed to carry its burden proving that claims 11-16 were obvious over the cited art. The Federal Circuit concluded that there was substantial evidence to support the PTAB’s finding and affirmed the PTAB’s holding that claims 11-16 were not unpatentable as obvious over the cited art.

This case illustrates the importance of carefully selecting grounds with which to petition the PTAB for IPR. The play-it-safe, comprehensive approach to attacking a patent may backfire, as the PTAB may find several grounds redundant over each other and, at most, choose one for further consideration in a review. Where multiple grounds are contemplated, the basis for each ground should be thoroughly understood and explained in the petition in a manner that establishes the unique nature of each of the grounds.