Federal Circuit Holds that PTAB Cannot Depart from Petition and Institute a Different IPR of its Own Design

March 2, 2020

By: Sheri L. Gordon

The Federal Circuit in Koninklijke Philips N.V. v. Google LLC, Microsoft Corp., and Microsoft Mobile Inc., Appeal No. 2019-1177 (Fed. Cir. January 30, 2020), held that the PTAB erred in instituting IPR on a ground that was not presented in the petition but, instead, was developed by the PTAB, and in holding challenged claims unpatentable based on that ground.  The Court relied heavily on the Supreme Court’s SAS decision to support its reasoning and holding. Slip op. at 8-11.  The Court explained that while the PTAB is not limited by the exact language of the petition, it does “not enjoy a license to depart from the petition and institute a different inter partes review of [its] own design.” Id. at 10.

The Court also held that the PTAB did not err in relying on the general knowledge of one skilled in the art to supply missing limitations in its obviousness analysis. The Court rejected Philip’s argument that reliance on “general knowledge” is improper because §311(b) limits IPR to prior art consisting of only patents and printed publications, and “general knowledge” is neither. Slip op. at 11-13.  The Court explained that the limit on what prior art can be considered in an IPR does not lead to a conclusion that knowledge of the skilled artisan be ignored when determining whether it would have been obvious to modify the prior art. Id. at 12.  The Court relied on the language of § 103 and several of its prior decisions to show that, irrespective of the tribunal, “the inquiry into whether any ‘differences’ between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.” Id.