PTAB May Not Create a New Ground of its Own, But Can Rely on Additional Art in Support of a Petition Ground
Recently, the Federal Circuit in Philips v. Google (here) explained that the Patent Trial & Appeal Board (PTAB) may only institute trial on grounds presented in a trial petition. 948 F.3d 1330 (Fed. Cir. 2020). That is, the Board may not formulate its own grounds from the petition art. This is because the Supreme Court has explained the AIA statutes do not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).
But, as explained this week in Lone Star Silicon Innovations LLC v. Iancu (here), this prohibition against agency formulated grounds does not prevent the Board from looking to additional references for evidentiary support (such as general knowledge in the art) to support an existing trial ground.
In Lone Star, Micron Technology, Inc. filed an IPR petition and asserted an obviousness ground based upon two references (A+B). Within that ground, Micron asserted two separate theories regarding the prior art’s teachings: (1) that one reference expressly taught a critical claim limitation, and (2) the same claim limitation was “well known in the prior art,” as an obvious variation (as evidenced by three additional references provided as evidentiary support for the knowledge in the art).
In its the institution decision, the Board rejected Micron’s first theory and instituted the “knowledge in the art” ground, and at the conclusion of trial, found all of the challenged claims obvious.
Lone Star appealed, arguing that the A+B ground of obviousness—based on the first theory of the prior art’s teachings—was the only one set forth in the petition, and that the Board exceeded its authority when it held claims unpatentable based on a ground of obviousness (knowledge in the art theory) that was argued as absent from in Micron’s petition. In other words, Lone Star argued that by relying on any aspect of a documentary support for knowledge in the art meant that such documents were part of the actual ground (i.e., A+B+C+D+E) akin to the new ground in Philips.
The Federal Circuit rejected Lone Star’s argument, explaining that the Board interpreted the knowledge in the art ground as in the petition, and that institution decisions may not be challenged. The Court further distinguished this scenario from the one in Philips, explaining:
[T]he Board instituted inter partes review based on the ground of obviousness that was presented in Micron’s petition . . .. The petition undisputedly asserted only one obviousness ground. The Board was not, however, obligated to “ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” . . . Indeed, the statutory definition of obviousness expressly depends on what would have been known to a person having ordinary skill in the art. 35 U.S.C. § 103.
The Court rejected Lone Star’s argument because the Board repeatedly made clear that the instituted ground was based on the asserted references as presented in the petition. The additional references were only being relied on for their teachings of the level of knowledge in the art—not as a newly formulated ground of the Board’s making. While Lone Star disagreed that the petition adequately presented the “knowledge in the art” ground, the Board’s acceptance of that presentation as being made in the petition—and the non-appealability of that determination—arguably saved the petitioner.