PTAB Cannot Institute IPR on PTAB-Created Grounds
Before Prost, Newman, and Moore. Appeal from Patent Trial and Appeal Board.
Summary: The Board can institute IPR only on grounds raised in a petition. Additionally, the Board can rely on general knowledge of a skilled artisan as of the priority date in evaluating obviousness.
Google petitioned for IPR of a patent owned by Philips directed to forming a distributed multimedia presentation for a client device’s media player. In its petition, Google raised one obviousness ground of a first prior art reference and general knowledge of a skilled artisan. Google cited a second prior art reference and expert testimony as evidence of this general knowledge. The Board instituted IPR on both the ground raised in Google’s petition and a second ground of obviousness over the first prior art reference in view of the second prior art reference. The Board concluded that the claims were obvious based on both grounds, citing the same reasons, arguments, and evidence for both.
The Federal Circuit held that the Board erred in instituting on the second ground because it was not raised in Google’s petition. The Court explained that the petition, and not the Board’s discretion, defines the metes and bounds of an IPR. With respect to the ground raised in Google’s petition, the Federal Circuit affirmed the Board’s finding of obviousness. The Federal Circuit acknowledged that prior art in an IPR is limited to patents and printed publications. It explained, however, that the obviousness inquiry under § 103 requires evaluation from the perspective of a skilled artisan, and such evaluation necessarily depends on the knowledge of a skilled artisan. It was thus proper for the Board to rely on such knowledge in its obviousness determination.
Editor: Paul Stewart