Tuesday, April 05, 2016

HP loses appeal of IPR decision

The bottom line:

HP Inc. (“HP”) appeals from the final decision of the
United States Patent and Trademark Office (“PTO”)
Patent Trial and Appeal Board (the “Board”) in an inter
partes review (“IPR”) proceeding finding claims 1–12, 14,
and 15 of U.S. Patent 6,771,381 (the “’381 patent”), owned
by MPHJ Technology Investments (“MPHJ”), unpatentable
as anticipated, and finding claim 13 of the ’381 patent
not unpatentable as anticipated. See Hewlett-Packard Co.
v. MPHJ Tech. Invs., LLC, IPR2013-00309, 2014 WL
6617698 (P.T.A.B. Nov. 19, 2014) (“Final Decision”). HP
argues that the Board erred by not also finding claim 13
unpatentable as anticipated, and challenges the Board’s
decision not to review whether claim 13 is unpatentable
as obvious. Because the Board did not err and because we
cannot review the decision not to institute, we affirm.

One issue raised by HP

“Anticipation is a question of fact reviewed for substantial
evidence.” In re Rambus, Inc., 753 F.3d 1253,
1256 (Fed. Cir. 2014). A finding is supported by substantial
evidence if a reasonable mind might accept the evidence
as sufficient to support the finding. Consol. Edison
Co. v. NLRB, 305 U.S. 197, 229 (1938).
HP argues that the Board did not consider all of the
evidence presented, and that therefore the Board’s findings
are not supported by substantial evidence. Specifically,
HP argues that although the Board asserted that
HP’s arguments relating to claim 13 were a repetition of
the arguments HP had made with respect to claims 1, 2,
and 7, HP had also referenced arguments and evidence
presented relating to claim 9. Appellant’s Br. 16–17.
Because the Board did not address those arguments, HP
argues, it asks that the Board’s decision be reversed. Id.
at 19.

But HP could not convince the CAFC:

We agree with MPHJ that the Board fully considered
all of the evidence that HP presented. Although the
Board decision does not directly state that it considered
the evidence relating to claim 9, that evidence is almost
identical to the evidence that HP presented with respect
to claim 13. J.A. 2275, 2277. As the Board stated, the
evidence regarding both claims “generally refers to the
analysis of claims 1, 2, and 7[.]” Final Decision at *30.
The only evidence listed in the treatment of claim 9, but
not listed in the treatment of claim 13, is pages 33, 34,
and 114 of SJ5. Compare J.A. 2275, with J.A. 2277.
Those pages of SJ5 are cited in paragraph 132 of HP’s
expert report, however, and paragraph 132 is listed in the
treatment of claim 13. J.A. 1357, 2277. Accordingly, the
Board did consider the evidence that HP alleges had been
Moreover, review of SJ5 reveals that the Board’s finding
that it does not teach a “list of available module
means” is supported by substantial evidence. HP’s petition
does not specifically identify what it views as the
input, output, and process modules. See J.A. 1357, 1361,
2275, 2277. The only “lists” HP identifies are “lists of
destinations, workflows, and the like,” and the evidence
presented does not equate destinations or workflows with
input, output, or process modules. See J.A. 1357, 1458–
59, 1539.

The important part of the decision:

HP also challenges the Board’s refusal to institute review
on the basis that that HP’s obviousness ground in
the petition was redundant in view of the instituted
anticipation grounds.
Before reaching the merits of HP’s argument, we must
first address whether we have jurisdiction to consider the
argument at all. Under 35 U.S.C. § 314(d), “[t]he determination
by the Director whether to institute an inter
partes review under this section shall be final and nonappealable.”

HP argues that § 314(d) does not prevent our review
of the issue of redundancy because the “under this section”
language means that only determinations made
under § 314 generally are immune from review. Id. As
the only determination in § 314 is the determination
whether “the information presented in the petition . . .
and any response . . . shows that there is a reasonable
likelihood that the petitioner would prevail with respect
to at least one of the claims challenged in the petition,”
HP argues, only that determination is immune from
review. Appellant’s Br. 24 (quoting 35 U.S.C. § 314(a)).
HP argues that, as a result, the § 314(d) bar does not
apply to this case because § 314 does not give the Director
the authority to refuse to institute review based on a
determination of redundancy. MPHJ and the Director
respond that we have interpreted § 314(d) to foreclose
review of issues other than the § 314(a) determination.
Appellee’s Br. 5–7; Intervenor’s Br. 16–18, 20–24.

We agree with MPHJ and the Director that the
§ 314(d) bar on judicial review is not limited to the determination
whether there is a reasonable likelihood that
the petitioner would prevail. In Achates Reference Publishing
v. Apple Inc., we specifically rejected as “crabbed
and . . . contradicted by this court’s precedent” the argument
that the “under this section” language in § 314(d)
limited the bar on review. 803 F.3d 652, 658 (Fed. Cir.
2015). Moreover, we have found that § 314(d) bars our
review of aspects of the institution decision other than the
§ 314(a) determination whether there is a reasonable
likelihood that the petitioner would prevail. SightSound
Techs., LLC v. Apple Inc., 809 F.3d 1307, 1313–14 (Fed.
Cir. 2015) (refusing to review Board’s consideration of
obviousness in the final decision despite not being raised
in the initial petition); Achates, 803 F.3d at 658 (refusing
to review the Board’s assessment of the time-bar provisions
of § 315(b)); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1273–74 (Fed. Cir. 2015), cert. granted sub
nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
(U.S. Jan. 15, 2016) (No. 15-446) (refusing to review the
Board’s decision to institute review of certain claims on
the basis of prior art not asserted regarding those claims).
Indeed, we recently held that § 314(d) bars our review of
the Board’s decision not to institute IPR on redundancy
grounds. See Shaw Indus. Grp., Inc. v. Automated Creel
Sys., Inc., Nos. 15-1116, 15-1119, ___ F.3d ___, slip. op. at
6–9 (Fed. Cir. Mar. 23, 2016); Harmonic Inc. v. Avid
Tech., Inc., No. 15-1072, ___ F.3d ___, 2016 WL 798192, at
*7–9 (Fed. Cir. Mar. 1, 2016).

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1427.Opinion.3-31-2016.1.PDF

**Separately, of simple historical interest:

After 36 Years, Archivists Finally Found the Wright Brothers’ Airplane Patent

The missing patent was found safe and sound in a Kansas storage facility

link: http://www.smithsonianmag.com/smart-news/after-36-years-archivists-finally-found-wright-brothers-airplane-patent-180958649/#XaofYdqyYqgj2oO0.99


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