In HP Inc. v. MPHJ Tech. Investments, LLC, Appeal No. 2015-1427, the Federal Circuit affirmed the PTAB’s findings that all but one of the challenged claims in an IPR were anticipated.

HP petitioned for inter partes review of all claims in a patent, arguing that all claims were both anticipated and obvious. The PTAB instituted review of all claims on anticipation grounds, but did not institute based on obviousness grounds because it determined they were redundant. In its decision, the PTAB found that all claims, except Claim 13, were unpatentable as anticipated. HP appealed, challenging the Board’s decision not to institute on obviousness grounds.

The Federal Circuit held that it is barred from reviewing the Board’s decision to institute under 35 U.S.C. § 314(d).  The § 314(d) bar on judicial review is not limited to the determination whether there is a reasonable likelihood that the petitioner would prevail.  However, the Federal Circuit explained that HP will not be estopped from challenging claim 13 based on the obviousness ground because that ground did not become a part of the IPR.