Fed. Cir.: Don't Expect PTAB To Do Your Work For You

The Federal Circuit's recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with particularity.  In the decision, the Federal Circuit affirmed a decision of the Board not to adjudicate a challenged claim as unpatentable because the petitioner had not raised the specific ground for the claim in its petition.  The Board had so ruled despite having found two other claims containing similar claim limitations as obvious under the same ground.

In its petition, Microsoft had argued that claims 1-3 and 18 were anticipated by the "Obelix" prior art reference, and that claims 2, 3 and 25 were obvious over Obelix and the "Skillen" patent.  In its final written decision, the Board found that claim 1 was anticipated by Obelix, but claims 2, 3 and 18 were not.  The Board then considered obviousness and found that Obelix did not disclose the