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In this IPR proceeding brought by Harmonic, the PTO instituted the IPR based on some, but not all of the grounds asserted by Harmonic.  As to the grounds that the PTO did not institute the IPR, it stated that they were redundant of the grounds on which it did institute the IPR. 

The PTO found claims 1-10 to be unpatentable, but found that claims 11-16 were patentable over the prior art on the grounds stated in the PTO’s institution of the IPR.  Harmonic appealed on two grounds.  First, on the merits, Harmonic contended that the PTO erred by finding claims 11-16 to be patentable.  The court, however, held that substantial evidence supported the finding that Harmonic had not proven claims 11-16 to be obvious. 

Second, Harmonic contended that, having held that claims 11-16 were patentable over the grounds accepted by the PTO when it instituted the IPR, the PTO erred by not addressing the alternative grounds that Harmonic presented with its petition that were not part of the PTO’s decision when instituting the IPR.  The court stated the rule found in 35 U.S.C. § 141(c) that it lacks jurisdiction to review an institution decision.  Harmonic characterized the PTO’s decision to not institute the IPR based on grounds it deemed to be redundant as a case management decision and not an institution decision.  The Federal Circuit disagreed, holding that the prohibition on appeals of institution decisions goes to both decisions to institute and to not institute, and the PTO’s decision here was a mixture of both.  Accordingly, the court held that it lacked jurisdiction to hear Harmonic’s appeal on this ground.

Harmonic Inc. v. Avid Technology, Inc. Case No. 2015-1072 (March 1, 2016); Opinion by: Stoll, joined by Chen and Mayer; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.

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