Harmonic, Inc. v. Avid Technology, Inc.
815 F.3d 1356
| Fed. Cir. | 2016Background
- Avid owns U.S. Patent No. 5,495,291, which claims a video decompression system that avoids blank frames when switching between compressed video streams by using multiple decompression buffers and timed switching. Claims 11–16 depend from claim 9; claim 11 requires the controller to command switching to a second decompression array after a "predefined period of time."
- Harmonic petitioned for inter partes review (IPR) challenging all claims of the ’291 patent on multiple prior-art grounds. The Board instituted IPR on one ground: obviousness based on Haskell combined with Rossmere, and declined to institute on four other grounds as "redundant."
- The Board found claims 1–10 unpatentable over Haskell+Rossmere but concluded claims 11–16 were patentable because Haskell+Rossmere did not disclose the "predefined period of time" limitation, which the Board construed as "a prior defined period of time."
- Harmonic appealed both the Board’s merits determination that claims 11–16 are patentable and the Board’s refusal to institute on the other grounds; Avid and the PTO intervened defending the Board.
- The Federal Circuit reviews the Board’s ultimate obviousness conclusion de novo and underlying factual findings for substantial evidence; but 35 U.S.C. § 314(d) generally bars appellate review of institution decisions.
Issues
| Issue | Plaintiff's Argument (Harmonic) | Defendant's Argument (Avid / PTO) | Held |
|---|---|---|---|
| Whether Haskell+Rossmere render claims 11–16 obvious | Haskell discloses features (demultiplexer, bit‑rate control, "predetermined system timing") that satisfy the "predefined period of time" limitation | Haskell lacks any teaching or suggestion of commanding an input switch to provide data to a second decompression array after a prior defined period; petitioner failed to meet its burden of particularized proof | Affirmed: substantial evidence supports Board that Haskell+Rossmere do not teach the "predefined period of time" limitation, so claims 11–16 are patentable |
| Whether the Board erred by not considering non‑instituted ("redundant") grounds after finding claims 11–16 patentable | Board should have revisited and considered the non‑instituted grounds once the instituted ground failed to invalidate claims 11–16 | The decision to institute on some grounds and deny others is an unreviewable institution decision under § 314(d); PTO regulation 37 C.F.R. § 42.108 permits institution on a subset of grounds | Dismissed for lack of jurisdiction: § 314(d) bars review of the institution decision (including denial-as-redundant), and § 42.108 is a permissible regulation allowing subset-of-grounds institution |
Key Cases Cited
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) (IPR obviousness review standard; § 314(d) bars review of institution decisions)
- In re Baxter Int'l, Inc., 678 F.3d 1357 (Fed. Cir. 2012) (standard of review for Board fact findings)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (framework for obviousness analysis)
- St. Jude Med. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (no jurisdiction to review denial of institution)
- In re Dominion Dealer Sols., LLC, 749 F.3d 1379 (Fed. Cir. 2014) (denial of institution not reviewable)
- Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) (limits on review of institution decisions where challenge goes to the Board's ultimate authority)
- Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (§ 314(d) bars review of institution decisions, including § 315(b) timeliness challenges)