PTAB’s Institution Decision, Even if Based on a Subset of Grounds, Is Still Unreviewable

In an appeal from a Patent Trial and Appeal Board’s (PTAB’s) final written decision, the Federal Circuit ruled that the PTAB’s decision to institute an inter partes review (IPR) proceeding only on a subset of prior art grounds raised by the petitioner but not on other grounds is still part of the PTAB’s “comprehensive” institution decision, which the Federal Circuit cannot review. Harmonic Inc. v. Avid Technology, Inc. No. 2015-1072 (Fed. Cir. March 1, 2016).

Harmonic filed an IPR petition with the PTAB to review patentability of Avid’s patent on uninterrupted video decompression technology, advancing seven different prior art grounds against all twenty claims of the patent. The PTAB instituted the IPR on claims 1-16 based only on one ground, disposing of four other grounds directed at claims 1-16 as “redundant” to the instituted ground, as well as the two remaining grounds directed at claims 17-20. The final written decision of the PTAB found claims 1-10 invalid, but claims 11-16 not invalid, over the single instituted ground.

On appeal, Harmonic asserted that (i) the PTAB erred in its patentability determination on claims 11-16; and (ii) upon such determination, the PTAB should have reconsidered the other prior art grounds that it previously deemed redundant. To support its second position, Harmonic argued that “the non-binary nature of the Board’s [institution] decision—i.e., instituting on some grounds, but not others” presented unique facts not present in Federal Circuit precedents, transferring the decision from the realm of an “institution decision” into the realm of a “case management decision,” thus under the Federal Circuit’s jurisdiction to review.

After affirming the patentability of the claims at issue, the Federal Circuit dismissed Harmonic’s attempt to re-categorize the institution decision, which it found “no different than the circumstances squarely addressed in [its] prior decision. A decision to institute some grounds and not others, the Federal Circuit reasoned, is simply a combination of a decision to institute and a decision to not institute, each found unreviewable by the Federal Circuit in Cuozzo and St. Jude, respectively.

This position was not affected by the PTAB’s use of the term “redundant” for the non-instituted grounds, because the term simply implied that the non-instituted grounds were directed to the same claims as the instituted grounds, rather than to prior art references that are duplicative of those relied on in the instituted ground.