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Evidence from Non-Instituted Grounds Not Permitted in Final Written Decision at PTAB

| Christie Matthaei

IN RE: IPR LICENSING, INC.,

Before O’Malley, Newman, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary: Establishing a motivation to combine two references for an obviousness determination in an IPR requires evidentiary support, and may not rely on evidence from non-instituted grounds.

ZTE requested inter partes review of IPR Licensing’s patent citing obviousness based on multiple references and multiple grounds. The Board instituted on a single ground and denied the other asserted grounds as redundant.  The Board then invalidated all challenged claims on the instituted ground. The Federal Circuit upheld the invalidity determinations for two of the three claims, and reversed and remanded the finding of invalidity of the third claim because it found there was insufficient evidentiary support in the Board’s analysis regarding the motivation to combine. On remand, the Board yet again invalidated the remanded claim with very similar reasoning to its first decision but relied on a new reference in its determination. The new reference was asserted in other, non-instituted grounds but not in the instituted ground.  IPR Licensing appealed a second time.

IPR Licensing argued that the Board improperly relied on prior art that was not asserted in support of the only instituted ground. The Federal Circuit agreed. The Federal Circuit held that the Board may not rely on evidence from non-instituted grounds. The Federal Circuit further explained that allowing arguments to rest on such evidence would deny patent owners the opportunity to rebut or anticipate such arguments. Because the Board relied on the same reasoning the Federal Circuit rejected in the first appeal, and further relied on evidence outside the instituted ground, the Federal Circuit reversed the Board’s decision.

Editor: Paul Stewart