PTAB Should Have Considered Argument Raised In "Redundant," Non-Instituted Ground

In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to consider an argument the IPR petitioner made in a ground that the PTAB determined was "redundant" to the instituted grounds.

Petitioner Hulu, LLC, challenged claims of CRFD Research Ltd.'s patent directed to methods of transferring an ongoing software-based session from one device to another, allowing the user to begin a session on one device, such as a cell phone, and then transferring the session to another device, such as a laptop computer. The PTAB instituted review based on four grounds, one ground for anticipation by the "Bates" reference and three grounds for obviousness based on Bates in combination with other references. The petition also included a ground of obviousness based on Bates alone, but the PTAB determined that this ground was redundant and therefore did not institute review on