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HP, who instituted the IPR on MPHJ’s patent, appeals the decision of the PTAB finding claim 13 not anticipated by the prior art.  HP’s petition alleged anticipation and obviousness of claim 13, but the PTAB only instituted review of claim 13 for anticipation, because the obviousness contention was redundant of the anticipation argument.  As to the issue of anticipation, the Federal Circuit affirmed, finding that HP had not met its burden and the PTAB’s fining that the prior art lacked the particular element was supported by substantial evidence.  On the issue of the PTAB’s refusal to institute the IPR on the obviousness ground, the Federal Circuit held that, pursuant to 35 U.S.C. § 314(a), it was barred from reviewing that decision, as it was a decision relating to the institution of the IPR and the PTAB was not required to institute the IPR on all grounds asserted. 

HP, Inc. v. MPHJ Technology Investments, LLC, Case No. 2015-1427 (April 5, 2016); Opinion by: Lourie, joined by Schall and Hughes; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.

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