The US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) properly instituted an inter partes re-examination even though the requester had asked it to deny institution and had admitted that its request did not meet the institution standard. In re: AT&T Intellectual Property II, L.P., Case No. 16-1830 (Fed. Cir., May 10, 2017) (Reyna, J).

Two days before the inter partes review procedures went into effect, LG filed a request for inter partes re-examination of an AT&T patent directed to video data compression. Before the PTAB decided whether to initiate re-examination, LG sought to have its re-examination request denied, stating that it did “not believe there is a reasonable likelihood of prevailing with respect to any of the claims challenged in the Request.” Two weeks later, the PTAB granted LG’s initial request for inter partes re-examination. During the re-examination, LG withdrew from the proceedings. The PTAB nevertheless found the challenged claims anticipated. AT&T appealed.

On appeal, AT&T argued that the PTAB improperly instituted re-examination because LG had requested that its re-examination request be denied and as a result there was no requester or request. The US Patent and Trademark Office (PTO) intervened in the appeal, but only to argue that the Federal Circuit lacked jurisdiction to entertain AT&T’s challenge to the institution decision. The Court agreed with the PTO and rejected AT&T’s contrary argument:

The record does not support a finding that the Board instituted inter partes reexamination without the presence of a request and a requester. LG was the requester, and LG submitted a request. LG was still involved in the proceedings at the time the institution decision was made. While LG may have desired that its request to institute be denied, it was granted.

After finding that the PTAB acted within its statutory authority in instituting re-examination, the Court affirmed the PTAB’s anticipation finding on the merits.