On March 23 2016 the Federal Circuit held that it lacked jurisdiction to review a Patent Trial and Appeal Board (PTAB) decision denying institution of inter partes review on grounds that the PTAB deemed redundant. It further held that 35 USC Section 315(e) does not prevent a petitioner from later raising such denied grounds before the US Patent and Trademark Office (USPTO) or a district court.


Shaw Industries Group filed two petitions for inter partes review of Automated Creel Systems' US Patent 7,806,360, proposing 15 grounds of rejection in one petition and six grounds in the other. The PTAB instituted both inter partes reviews on only some of the proposed grounds. In particular, the PTAB denied one of Shaw's petitions on a ground alleging anticipation by a patent issued to Payne, deeming the Payne-based ground redundant. After the PTAB issued a consolidated final written decision, Shaw appealed the PTAB's decision not to institute on the Payne-based ground. It also petitioned for a writ of mandamus instructing the PTAB to re-evaluate its redundancy decision.


The Federal Circuit held that it had no authority to review the PTAB's decision to institute on only some of the grounds. Citing 35 USC Section 314(d) and St Jude Med, Cardiology Div, Inc v Volcano Corp,(1) the court stated that it lacks jurisdiction to review PTAB decisions instituting or denying inter partes review, regardless of whether the PTAB has issued a final written decision. In this case, the court interpreted the PTAB's redundancy denial to be a decision denying institution for efficiency purposes, not a substantive decision on patentability over the Payne reference. The court stated that, pursuant to Congress's authorisation, the USPTO had promulgated 37 CFR Section 42.108, which allows the PTAB to institute inter partes review on only some of the challenged claims and, for any given claim, based on only some of the proposed grounds. The court commented that it saw a benefit in the USPTO having this ability, particularly given the PTAB's statutory obligation to complete proceedings in a timely and efficient manner.

The Federal Circuit also denied Shaw's petition for a writ of mandamus, which was predicated on Shaw's concern that 35 USC Section 315(e) would estop Shaw from raising the Payne-based ground in future proceedings. The court agreed with the USPTO that Section 315(e) creates estoppel only for arguments "that the petitioner raised or reasonably could have raised" during an inter partes review. As the PTAB denied institution on the Payne-based ground, it was not raised – nor could it have been raised – during the inter partes review. Thus, Section 315(e) did not apply.

For further information on this topic please contact Tara A Byrne or Erin JD Austin at Fitzpatrick, Cella, Harper & Scinto by telephone (+1 212 218 2100) or email (tbyrne@fchs.com or eaustin@fchs.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.


(1) 749 F.3d 1373 (Fed Cir 2014).

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