In a recent decision affirming the PTAB’s patentability determination in an IPR, the Federal Circuit confirmed that it has no jurisdiction to review the Board’s refusal to institute grounds it deemed to be redundant of instituted grounds. Harmonic, Inc. v. Avid Technology, Inc., No. 2015-1072 (Fed. Cir. Mar. 1, 2016).

In its IPR petition, the Petitioner challenged claims 1-20 of the patent at issue in view of seven different prior art grounds. The Board instituted review of claims 1-16 on one obviousness ground, declined to institute review on four other grounds it deemed to be “redundant” to the instituted ground, and declined to institute review of claims 17-20 in view of the two remaining grounds. The Board ultimately found claims 1-10 invalid and claims 11-16 valid in its final written decision.

The Petitioner appealed the Board’s finding that claims 11-16 were valid and argued that the Board, after concluding that the instituted ground did not render claims 11–16 unpatentable, erred by failing to consider the other prior art grounds in Harmonic’s IPR petition that were not instituted.

On appeal, the Federal Circuit upheld the Board’s validity finding as supported by substantial evidence and ruled that it had no jurisdiction to review the Board’s decision not to institute on the other grounds. In discussing its rationale, the Court confirmed that the Board’s institution decisions are “final and nonappealable” under 35 U.S.C. § 314(d), and that the Board’s reference to the non-instituted grounds as “redundant” did not alter that conclusion.

Interestingly, the Court found that in using the term “redundant,” “the Board suggested nothing more than that the claims addressed by the non-instituted grounds were already addressed by the instituted ground.” In other words, according to the Federal Circuit, “the Board did not determine that the prior art relied on in the non-instituted grounds was duplicative of that relied on in the instituted grounds” (emphasis added). This is apparently the position the PTO argued in its intervenor’s brief.

This decision confirms that the Board has broad discretion to decide whether it will even consider certain grounds on the merits at the institution stage. Moreover, this decision confirms that the Federal Circuit has no jurisdiction to review whether the Board appropriately exercised its discretion in declining to consider non-instituted grounds on the merits.

This decision highlights the difficulties of challenging the Board’s institution decisions. The Federal Circuit has repeatedly affirmed that it has no jurisdiction to review PTAB institution decisions, and this case illustrates that the Board’s refusal to institute grounds deemed to be redundant is not an exception to this rule. However, the fact that non-instituted grounds deemed redundant may not be subject to future estoppel (as we wrote about here) might still counsel in favor of including such grounds in the petition.