A unanimous Federal Circuit panel recently affirmed the PTAB’s judgment holding that the Petitioner failed to satisfy its burden of proving that the challenged claims of the patent were obvious. TriVascular v. Samuels, No. 15-1631 (Fed. Cir. Feb. 5, 2016). In so ruling, the Federal Circuit addressed whether the Board is bound by any findings it makes in its Institution Decision.

In its IPR Petition, TriVascular challenged the claims of the Samuels patent for a vascular stent that could be affixed to the vascular wall via “an inflatable and deflatable cuff.” The Board instituted review on two obviousness grounds. In its Institution Decision, the Board concluded that on the limited record available to it, Samuels had not demonstrated teaching away from the asserted combinations.

After institution, the parties “introduced their respective expert reports regarding the instituted grounds,” according to the Federal Circuit’s opinion. In its Final Written Decision, the Board held that TriVascular failed to meet its burden of demonstrating that the challenged claims were unpatentable over the prior art. After the Board denied its petition for rehearing, TriVascular appealed.

On appeal, TriVascular argued that the Board erred both in its claim construction and in its holding that TriVascular failed to demonstrate that the challenged claims were invalid as obvious. In particular, TriVascular argued that the Board’s conclusion of nonobviousness was inconsistent with the Board’s findings in its Institution Decision, and that the Board should have clearly explained why it had changed its view of the patent’s validity.

Calling this argument “misguided,” the Federal Circuit held that the Board is not bound by any findings made in its Institution Decision. The panel emphasized that the Board decides institution without the benefit of a full record, and that it should change its view of the merits if further development of the record convinces the Board that its initial inclinations were wrong.

Further, the panel noted that there is a significant difference between the petitioner’s burden to establish a reasonable likelihood of success at institution and actually proving unpatentability by a preponderance of evidence at trial. The Board’s findings in its Final Written Decision were not inconsistent with those in its Institution Decision; rather, they were made under a qualitatively different standard.