Federal Circuit Questions PTAB’s “Redundancy” Practice in Shaw Industries Hearing

Although there are no formal limits on the number of grounds a petition may raise, the Patent Trial and Appeal Board (“PTAB”) often eliminates alternative grounds challenging the same patent claims as “redundant,” even if the redundant grounds would establish unpatentability.  The PTAB cites its statutory 12-month deadline for completing proceedings as making it necessary to eliminate redundant grounds and run trials efficiently.  On November 2, 2015, the Federal Circuit heard an appeal in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., Nos. 15-1116, 15-1119, which may change the PTAB’s redundancy practice.  A summary of the case and oral argument can be found on Finnegan’s AIA Blog.