Federal Circuit: Estoppel Does Not Apply to Non-Instituted Grounds

Authored by Brian S. Mudge and Ksenia Takhistova

In a recent precedential opinion in Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc.1, the Federal Circuit decided that IPR estoppel provisions in § 315(e) will not apply to any invalidity ground that the petitioner raised in the petition but the PTAB chose to not institute for redundancy. Another precedential opinion issued less than two weeks later in HP Inc. v. MPHJ Tech. Investments, LLC2 confirmed this result.


Both cases involve an appeal from PTAB final decisions in IPR proceedings. In the first case, Shaw was once a defendant in a patent-infringement case brought by Automated Creel over its US Patent No. 7,806,360 directed to “creels” for supplying yarn and other stranded materials to a manufacturing process. Shaw filed two petitions for inter partes review of the ’360 patent claims, which were later consolidated and resulted in one final decision. The Board did not institute many grounds proposed by Shaw, denying them as redundant, including a ground from the first petition that some of the ’360 patent claims were anticipated by the Payne reference. In the final written decision, the Board invalidated some, but not all, of the ’360 patent claims based on the instituted grounds. Shaw appealed from the Board’s decision, and also petitioned for a writ of mandamus, requesting the Federal Circuit to instruct the PTO to institute IPR based on the Payne reference.

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PTAB Grants Rare Claim Amendment in an IPR

Authored by Brian S. Mudge and Dragan Plavsic 

In a recent IPR decision, the PTAB granted a patent owner’s motion to amend, a relatively rare occurrence in AIA trials to date. The case, Shinn Fu Co. of America, Inc. v. The Tire Hanger Co., No. IPR2015-00208, addressed the extent to which a patent owner must analyze prior art in meeting its requirements to establish patentability of proposed new claims. Providing further guidance as to the Federal Circuit’s recent Nike1 opinion, the PTAB ruled that there is no requirement that a patent owner analyze expressly every individual reference cited during prosecution of the challenged patent — particularly where there are many different permutations of the cited prior art. Essentially, the PTAB’s decision means that so long as the patent owner groups prior art references according to claim features they teach, and examines a representative one out of each group for each feature, the patent owner would meet its duty of candor and satisfy its burden for the motion to amend.

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