Friday, November 22, 2019

The CAFC notes PTAB cannot rely on material outside the record

The outcome:

In this appeal, Appellant IPR Licensing (“IPRL”) argues that the only additional
evidence the Board cited in support of its conclusion
on remand was not part of the record before the Board. We
Because the Board’s decision remains unsupported, we
reverse the Board’s finding of invalidity as to ground one
and, because all other challenges to the Board’s final judgment of
invalidity are waived, we vacate that judgment.

The opposing party must be given a chance to respond:

Our review of final written decisions by the Board is
rooted in “basic principles of administrative law.” Pers.
Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir.
2017). These principles impose important limits on our review of decisions
by the Board. But they also impose important limits on the Board’s authority during inter partes
reviews. For example, “the Board must base its decision on
arguments that were advanced by a party, and to which the
opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
2016); see also Rovalma, S.A. v. Bohler-Edelstahl GmbH &
Co. KG, 856 F.3d 1019 (Fed. Cir. 2017). Whether the Board
improperly relied on new arguments is reviewed de novo.
In re NuVasive, Inc., 841 F.3d 966, 970 (Fed. Cir. 2016).


The Board therefore cannot rely on evidence relating
solely to grounds on which it never instituted. To hold otherwise would
allow the Board’s final written decision to
rest on arguments that a patent owner has no ability to
rebut or anticipate. See Magnum Oil, 829 F.3d at 1381
(“[T]he Board must base its decision on arguments . . . to
which the opposing party was given a chance to respond.”).
But the Board did just that in relying on UMTS in its final
written decision here

As to jurisdiction:

It is well-established that the filing deadline for a notice of appeal is jurisdictional. For example, in Bowles v.
Russell, 551 U.S. 205 (2007), a habeas petitioner failed to
file his appeal within the 30-day time limit established by
28 U.S.C. § 2107(a) and Fed. R. App. Proc. 4(a)(1)(A). The
Supreme Court held that this failure created a jurisdictional defect. Bowles, 551 U.S. at 208. In doing so,


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