PTAB’s refusal to institute a review of certain grounds based on a determination of redundancy is not appealable, nor is the sufficiency of the PTAB’s explanations for its institution and non-institution decisions
HP Inc. v. MPHJ Technology Investments, No. 2015-1427 (Fed. Cir. Apr. 5 2016)
The petitioner filed for inter partes review (IPR) of certain claims of the patent-in-suit, asserting that the contested claims were invalid as anticipated and obvious. The Patent Trial and Appeal Board (PTAB) instituted a review of the challenged claims on several anticipation grounds, but pursuant to 37 C.F.R.§ 42.108(a), declined on the basis of redundancy to institute a review based on other grounds, including the obviousness ground. After the PTAB found one of the challenged claims to be not anticipated, the petitioner appealed both the finding of no anticipation and the PTAB’s refusal to institute a review on the basis of redundancy. The Federal Circuit affirmed.
The Federal Circuit held that it lacked jurisdiction to review the PTAB’s refusal to institute a review on the obviousness ground in light of its determination that the obviousness ground was redundant in view of the instituted anticipation grounds. Adhering to prior rulings, the Federal Circuit refused to adopt a “crabbed” reading of the appeal bar in 35 U.S.C. § 314(d) that would permit appeal of the redundancy determination. The Federal Circuit explained, citing Harmonic Inc. v. Avid Tech., Inc., that because the redundancy determination was a combination of non-appealable decisions to institute on the anticipation grounds, and non-appealable decisions not to institute on the redundant obviousness grounds, the refusal to institute was non-appealable.
The Federal Circuit also held that the appeal bar extended to the petitioner’s attempt to utilize the Administrative Procedure Act (APA), to challenge the PTAB’s allegedly deficient explanation of the redundancy determination. The Federal Circuit explained that Congress’ “specific statutory language” in 35 U.S.C. § 314(d) bars appeal of the PTAB’s institution and non-institution decisions, and overcomes the “strong presumption” of judicial review of agency action under the APA.