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PGS Geophysical AS v. Iancu

Post-SAS Challenge to IPR Partial Institution is Waivable

PGS Geophysical AS v. Iancu, __ F.3d __, (Fed. Cir. June 7, 2018) (Wallach, TARANTO, Stoll) (PTAB) (3 of 5 stars)

Fed Cir affirms three IPR decisions of unpatentability for obviousness as to a single patent. That all three IPRs involved only partial institution of the petitioned claims and grounds (in one IPR, institution was denied for certain claims; in the other two, institution was on all claims but denied on certain grounds) does not make the Board’s decisions non-final for purposes of confirming appellate jurisdiction. The opinion reasons that SAS, 138 S. Ct. 1348 (2018), requires equal treatment of all petitioned claims and grounds by the PTAB. It finds finality in the PTAB’s treatment of all claims and grounds. “There is finality here: the combination of the non-institution decisions and the final written decisions on the instituted claims and ground terminated the IPR proceedings that are now on appeal.” Op. at 9. The non-institution on certain claims/grounds did not require the Court to either reopen consideration of the non-instituted material, or to decline review. The opinion notes that neither the patent owner nor the PTO requested such an outcome. The opinion reasons that neither SAS nor any other known authority requires the Court to act sua sponte in the absence of a party request. “Even if the Board could be said to have acted ‘ultra vires’ in refusing to institute reviews of some claims and grounds—and then proceeding to merits decisions concerning the claims and grounds included in the instituted reviews—the Board’s error is waivable, not one we are required to notice and act on in the absence of an appropriate request for relief on that basis.” Op. at 11. With no requirement to act sua sponte, the Court declines to exercise any discretion to decline to address the appeals on the instituted and decided claims/grounds.

Sufficient evidence supported the Board’s determination that one of skill in the art would have been motivated to combine the prior art references so as to reach the patented invention. The Board’s reading of the references was reasonable. The Board’s explanation of its reasoning was sufficient to show that it properly applied the motivation inquiry, as per Personal Web Technologies, 848 F.3d 987 (Fed. Cir. 2017), et al.

KEYWORDS: INSTITUTION DECISION; INTER PARTES REVIEW; OBVIOUSNESS (YES); NON-INSTITUTION