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ARTICLE · 01 APRIL 2020

New PTAB Ground Or Just Supporting Evidence?

Ropes & Gray LLP
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Recently, the Federal Circuit in Philips v. Google (here) explained that the Patent Trial & Appeal Board (PTAB) may only institute trial on grounds presented in a trial petition.

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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PTAB May Not Create a New Ground of its Own, But Can Rely on Additional Art in Support of a Petition Ground

Recently, the Federal Circuit in Philips v. Google (here) explained that the Patent Trial & Appeal Board (PTAB) may only institute trial on grounds presented in a trial petition. 948 F.3d 1330 (Fed. Cir. 2020). That is, the Board may not formulate its own grounds from the petition art. This is because the Supreme Court has explained the AIA statutes do not "contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose." SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).

But, as explained this week in Lone Star Silicon Innovations LLC v. Iancu (here), this prohibition against agency formulated grounds does not prevent the Board from looking to additional references for evidentiary support (such as general knowledge in the art) to support an existing trial ground.

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