PTAB Trial Not Necessarily Constrained to Petition Grounds
Patentees often amplify relatively insignificant technical differences between a patent claim and the prior art in district court to great success. Such strategies often fall flat in front of the USPTO where the technical expertise of the agency can expose such distinctions as inconsequential (inherent), or obvious — usually.
For example, in patent reexamination, examiners adopt and/or modify challenges to suit their technical understanding. Later, on appeal, judges of the Patent Trial & Appeal Board (PTAB) may issue new rejections where a trivial patent claim difference is known, or suggested by the art as obvious. More recently, however, the same PTAB judges reviewing AIA trial petitions often times take a hyper-technical view of proposed grounds of unpatentability. That is, judges of the trial section often feel constrained to the grounds presented in a petition even though an argued "distinction" over the proposed grounds is a well-known, trivial feature in the art.
Today, the Federal Circuit reiterated that the PTAB is not so constrained in dealing with AIA trial petitions.
Previously, in In re Cuozzo, the CAFC did not disturb the PTAB's decision to institute trial on more claims than challenged in a petition. In today's decision, the Court found that the PTAB is also not limited by proposed prior art grounds.
In Sightsound Technologies LLC v. Apple Inc. the Court explained (here):
SightSound argues that the Board erred in considering obviousness because Apple failed to include such argument in its petitions. As inCuozzo, the statute does not limit the Board’s authority at the final decision stage to grounds alleged in the CBM petitions. The reasoning of Cuozzo and Achates applies not only to § 314(d), involved in Cuozzo and Achates applies not only to § 314(d), involved in Cuozzo and Achates, but also to § 324(e), the identical provision applicable to CBM review. SightSound argues that the “under this section” language in § 324(e) only bars review of challenges to institution decisions based on the grounds specified in § 324(a) and (b). We reject this argument. Section 324(e) bars review of any institution decision.
In addressing the patentees due process complaints concerning the lack of obviousness grounds in the petition, the Court explained in a footnote:
We see no merit in SightSound’s contention that the Board’s approach deprived it of due process, particularly in light of the Board’s care in giving SightSound multiple opportunities to comment on the obviousness issue beyond what was required.
While patentees may lament this decision as yet another "anti-patent" anecdote, the agency owes a duty to the public to correct its mistakes. That is not to say that the PTAB owes it to the public to rewrite every faulty petition filed, not at all. Just that, in this case, the distinction over the anticipation ground was that the reference did not show data being stored to a hard disk. Arguing such a decades-old feature as patentably distinguishing to an expert agency should never fly.