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ARTICLE · 20 NOVEMBER 2015

Is The PTAB Blindly Throwing Darts?

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There's been an issue bubbling under the surface of PTAB AIA proceedings: redundant grounds.

United StatesIntellectual Property
DeAnn Smith
DeAnn Smith
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There's been an issue bubbling under the surface of PTAB AIA proceedings: redundant grounds.

The issue boiled to prominence last week during oral argument at the Federal Circuit in Shaw Industries Group v. Automated Creel Systems, No. 2015-1116, which was an appeal of IPR2013-00132. Shaw, the Petitioner, had several of its grounds directed to certain claims denied in the interests of "efficiency" and then lost on the instituted grounds for those claims in the final decision. It was given no opportunity to revive the denied grounds and is prevented under the present statutory scheme from appealing the denial (more on that below). In discussing which grounds the PTAB had chosen to institute, Circuit Judge Moore stated that the PTAB "seems to be putting a blindfold on and throwing darts at the wall" (oral argument recording at 33:43). Circuit Judge Reyna then questioned the constitutionality of the Board's conduct and accused it of "taking away causes of action." Id. at

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