Federal Circuit Panel Finds PTAB Does Not Need to Revisit Redundant Grounds, PTAB Litigation Blog
In Harmonic, Inc. v. AVID Technology, Inc., a Federal Circuit panel affirmed the PTAB’s decision in IPR2013-00252 and ratified certain aspects of the Board’s handling of redundant grounds of unpatentability. In PTAB trials, such as IPRs, petitioners can present one or more grounds of unpatentability for each claim of a patent being challenged. In the Institution Decision, the Board gives an initial thumbs up or thumbs down to each presented ground, where a trial is instituted for each ground that the Board finds the petitioner has a reasonable likelihood of prevailing on. When a petitioner presents more than one ground for a single claim, the Board, in an effort to manage its workload, often exercises its authority under 37 C.F.R. § 42.108(a) to institute trial on less than all of the grounds presented. The Board elects to not hear certain grounds, regardless of their merit, based on a rationale that those grounds are “redundant” to grounds on which the PTAB elected to institute trial. This has been a regular practice of the Board since its founding in the fall of 2012. See Liberty Mutual v. Progressive, CBM2012-00003, Order (Redundant Grounds), (P.T.A.B., Oct. 25, 2012).
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