HP Inc. v. MPHJ Technology Investment., LLC
817 F.3d 1339
Fed. Cir.2016Background
- MPHJ owns U.S. Patent No. 6,771,381, which claims a distributed "virtual copier" system; claim 13 requires a server-maintained "list of available module means" (input, output, process modules) read at startup.
- HP petitioned for inter partes review (IPR) of the ’381 patent, asserting multiple anticipation grounds (notably HP ScanJet 5 user guide "SJ5" and U.S. Patent 5,499,108 "Cotte") and one obviousness ground combining SJ5 and an SJ5 press release.
- The PTAB instituted IPR on the Cotte and SJ5 anticipation grounds but declined to institute on the additional (obviousness) ground as redundant under 37 C.F.R. § 42.108(a).
- In its final decision the Board found claims 1–12, 14, and 15 anticipated (by Cotte) but concluded HP failed to prove claim 13 was anticipated (HP had not shown the required list of modules in Cotte or SJ5).
- HP appealed both the denial that claim 13 was anticipated and the Board’s refusal to institute review on the obviousness ground; the Director intervened.
Issues
| Issue | HP's Argument | MPHJ/Director's Argument | Held |
|---|---|---|---|
| Whether SJ5 or Cotte anticipates claim 13 ("list of available module means") | SJ5 (and Cotte) disclose lists (e.g., destinations, workflows) that correspond to the claimed module list; HP pointed to expert evidence and embodiments | Board reasonably found HP did not identify or map SJ5/Cotte disclosures to the claimed input/output/process module list/read-on-startup requirement | Affirmed: substantial evidence supports Board’s finding that claim 13 is not anticipated |
| Whether the Board erred by not instituting review on the obviousness ground as redundant | Board must address all grounds presented; refusal to institute on redundancy is reviewable and arbitrary under the APA | 35 U.S.C. § 314(d) bars judicial review of institution decisions, including redundancy; non-instituted grounds are not part of the merits and estoppel does not apply | Affirmed: decision not to institute on redundancy is nonappealable under § 314(d); Board satisfied APA obligations |
Key Cases Cited
- In re Rambus, 753 F.3d 1253 (Fed. Cir.) (anticipation reviewed for substantial evidence)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (Sup. Ct.) (definition of substantial evidence)
- Achates Reference Publ’g v. Apple Inc., 803 F.3d 652 (Fed. Cir.) (§ 314(d) bars review beyond § 314(a) determination)
- SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir.) (§ 314(d) bars review of certain institution determinations)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir.) (non-reviewability of institution decisions)
- Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir.) (when Board’s threshold determination is reviewable)
- St. Jude Med. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir.) (precedent on non-reviewability of institution decisions)
- Bowen v. Mich. Acad. of Family Physicians, 476 U.S. 667 (Sup. Ct.) (presumption of judicial review can be overcome by clear congressional intent)