# United States **Court of Appeals**  **for the Federal Circuit**

______________________
HP INC ., Appellant

v.

MPHJ TECHNOLOGY INVE STMENTS , LLC , Appellee

______________________

2015

- 1427

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013

- 00309

.

______________________
Decided: April 5, 2016

______________________
C HARLENE M. M ORROW , Fenwick & West

, LLP, Mou ntain View, CA

, argued for appellant

. Also represented by S TUART P. M EYER , R AVI R AGAVENDRA R ANGANATH

.

V IVEK G ANTI , Hill, Kertscher & Wharton LLP, Atla nta, GA, argued for appellee

. Also represented by S TEVEN G. H ILL

.

A MY J. N ELSON , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA

, argued f or intervenor Michelle K. Lee. Also represented by T HOMASHP INC

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W. K RAUSE , S COTT W EIDENFELLER , J OSEPH G ERARD P ICCOLO

.

______________________ Before L OURIE , S CHALL , and H UGHES , Circuit Judges

. L OURIE , Circuit Judge

. HP Inc. (“HP”) appeals from the final decision of the United States Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board ( the “Board ”) in an inter partes review (“IPR”) proceeding finding claims 1

– 12, 14, and 15 of U.S. Patent 6,771,381 (the “’381 patent” )

, owned by MPHJ Technology Investments (“MPHJ”), unpatent able as anticipat ed, and finding claim 13 of the ’381 patent not unpatentable as anticipated

. See Hewlett

- Pack ard Co. v. MPHJ Tech. Inv s. , LLC , IPR2013

- 00309, 2014 WL 6617698 (P.T.A.B. Nov. 19, 2014) (“ Final Decision ”). HP argues that the Board erred by not also finding claim 13 unpatentable as anticipated, and challeng es the Board’s decision not to review whether claim 13 is unpatentable as obvious. Because t he Board did not err and because we
cannot review the decision not to institute , we affirm

. B ACKGROUND
MPHJ is the owner of the ’381 patent, en titled “Di stributed Computer Architecture and Process for Virtual Copying,” which issued on August 3, 2004. The ’381 patent discloses a method and system that “extend [] the notion of copying .

. . to a process that involves paper being scanned from a device at one location and copied to a device at another location.” ’381 patent col. 5 ll. 47

– 51. “What makes Virtual Copier as simple as its physical counterpart .

. . is the fact that it replicates the identical motions that a user who is making a copy using a physical photocopier goes through.” Id. col. 6 ll. 47

– 51. Claim 13, the only claim at issue in this appeal, reads as follows : 13. A computer data management system inclu ding a server module comprising:HP INC

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e nable virtual copy operation means for initia t ing, canceling, and resetting said comput er data ma nagement system;

m aintain list of available module means for mai ntaining a registry containing a list of said input, output, and process modules that can be used in said computer data management system, said list being read on startup , and mainta ining another copy of said list in a modules object a c cessible by said input, output, client, process and server modules;

m aintain currently active modules means for maintaining said input, output, and process mo dules currently being used for a current co m puter data management system copy operating in a pr ogram object, and saving the currently a c tive mo dules in a process template file; and

m aintain complete document information means for maintaining information regarding a current file being copied, and sa ving the information in a document template file.

Id. col. 87 l. 45

– col. 88 l. 6 (emphasis added)

. Claim 13 thus requires, inter alia , a list of available modules

, including input, output, and process modules. See id. After acquiring the ’381 patent

, MPHJ sent letters to numerous small businesses

, alleging that those busines ses likely infringed the ’381 patent , among others

. Joint Appendix (“J.A.”) 2228

– 29. As “[a] good example of an infringing system,” the letter described a scanner co nnected to a local area network in communication with a server, whereby an employee could scan documents at the scanner and have the documents sent to the employee’s email address. J.A. 2229.

Because the letters were sent to users of HP’s multi

function printers, H P petitioned for IPR of the ’381 p a-HP INC

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tent

. In its petition , HP alleged that the claims of the ’381 patent were unpatentable either as anticipated or as obvious. J.A. 94. HP alleged seven grounds of anticip ation and one ground of obviousness. J.A. 2229. This appeal only implicates three grounds : Ground 1, that all claims are unpatentable as anticipated under 35 U.S.C. § 102(b) 1 by HP ScanJet 5 Scanner User’s Guide (“SJ5”)

, the user’s guide for one of HP’s network scanners ; Ground 6, that all claims are un patentable as antic ipated by U.S. Patent 5,499,108 (“Cotte”) , which is directed to a network

scanner ; and Ground 8, that claims 5, 7, 9, 11

– 13, and 15

are unpatentable as obvious under 35 U.S.C. § 103(a) over

an HP ScanJet 5 Press Release describing the SJ 5 sca nner (“ SJ5PR”)

, in view of SJ5. J.A. 2229.

The Board instituted review of all of the claims of the ’381 patent, finding that HP established a reasonable likelihood that the claims were unpatentable as anticipa ted by either Cotte or SJ5

. J.A. 33, 38. The Board d eclined to institute review based on the other asserted grounds of unpatentability, conclud ing that “[t]he add itional grounds are

. . . redundant in light of the determ ination that there is a reasonable likelihood that the challenged claims are unpatentable based on the grounds of unpatentability on which we institute an inter partes review.” J.A. 38

. As authority for denying review based on redundancy, the Board cited 37 C.F.R. § 42.108(a), which provides that “[w] hen instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim. ”

1 Because the ’381 patent was filed before the ado ption of the Leahy

- Smith America Invents Act, Pub. L. No. 112

- 29, § 3, 125 Stat. 284, 285

– 93 (2011), the prior ve rsion of § 102 governs this appeal

. See Fleming v. Escort, Inc. , 774 F.3d 1371, 1374 n.1 (Fed. Cir. 2014).HP INC

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HP did not seek rehearing o f th at decision. See 37 C.F.R. § 42.71. After institution, MPHJ filed a response, HP filed a reply, and the Board held an oral hearing. J.A. 42. During the hearing, Administrative Patent Judge Easthom questioned counsel for HP regar ding whether the “maintain list of available module means” limitation

was taught by SJ5. See J.A. 2877

– 79. Specifically , Judge Easthom asked counsel for HP to identify the process and server modules appearing in SJ5. J.A. 2879. Counsel responded that “ [t]here is no specific name” for those modules. J.A. 2879.

In the final written decision , issued November 19, 2014 , the Board found that claims 1

– 12, 14, and 15 were unpatentable as anticipated by Cotte. Final Decision at *16– 29

. The Board found that Cotte did not anticipate claim 13 because HP did not establish that Cotte disclose d the claimed list of available module means

. Id. at * 28

– 29

. In reaching that conclusion, the Board cited the exchange between Judge Easthom and counsel for HP at oral a rgu ment, and noted that HP did not “point out the specific list or show it is read on start

- up.” Id. The Board then analyzed whether claim 13 was u npatentable as anticipated by SJ5. Id. at * 29

– 30. The Board noted that HP did not respond to MPHJ’s arg uments that claim 13 was not anticipated, and again cited the exchange at oral argument. Id. Moreover, the Board reasoned that

, although “[t]he Petition generally refers to the analysis of claims 1, 2, and 7 to address the limit ations in claim 13 .

. . , those claims recite different el ements.” Id. at * 30. Finally, the Board found that HP did “not specify c learly how SJ5 discloses all the recited and argued element s ” b ecause HP did not “ specify the r equired lists of modules.” Id. Accordingly, the Board found that HP had not met its burden of establishing the unpatentability of claim 13

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HP timely appealed, and the D irector of the U.S. P atent and Trademark Office ( the “D irector ”) intervened pursuant to 35 U.S.C. § 143 , filing a brief and parti cipa ting in oral argument

. We have jurisdiction to review the final decision in an IPR proceeding pursuant to 28 U.S.C. § 1295(a)(4)(A)

. D ISCUSSION

I. A NTICIPATION “Anticipation is a question of fact reviewed for su bstantial evidence .” In re Rambus, Inc.

, 753 F.3d 1253, 1256 (Fed. Cir. 2014). A finding is supported by substa ntial evidence if a reasonable mind might accept the ev idence as sufficient to support the finding. Consol. Edison Co. v. NLRB

, 305 U.S. 197, 229 (1938).
HP argues that the Board did not consider all of the evidence presented, and that therefore the Board’s fin dings are not supported by substantial evidence. Specifically, HP argues that although the Board asserted that HP’s arguments re lating to claim 13 were a repetition of the argu ments HP had made with respect to claims 1, 2, and 7, HP had also referenced arguments and evidence presented re lating to claim 9. Appellant’s Br. 16

– 17. Because the Board did not address those arguments, HP argues, it asks that the Board ’s decision be reversed. Id.
at 19.

HP also argues that SJ5 does teach the “list of avail able module means” and so the Board’s finding to the contrary is not supported by substantial evidence. HP reasons that because a preferred embodiment of the ’381 patent teaches tha t the Windows registry contains the list of available modules, and SJ5 teaches using “lists of destinations, workflows, and the like [that are] started automatically when Windows is started,” SJ5 reads on the “list of available module means” limitation. I d. at 15

– 19

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MPHJ responds that the Board fully considered HP’s arguments , expert testimony, the prior art

, and MPHJ’s
response to the petition, and reasonably found that claim 13 was not unpatentable as anticipated

. Appellee’s Br. 3

– 5. We agree with MPHJ that the Board fully considered all of the evidence that HP presented

. Although the Board decision d oes not directly state that it considered the evidence re lating to claim 9, that evidence is almost identical to the evidence that HP presented with respect
to claim 13

. J.A. 2275 , 2277

. A s the Board stated, the evidence regarding both claims “generally refers to the analysis of claims 1, 2, and 7[.]” Final Decision at *30

. The only evidence listed in the treatment of claim 9

, but
not listed i n the treatment of claim 13

, is pages 33, 34, and 114 of SJ5. Compare J.A. 2275

, with J.A. 2277. Those pages of SJ5 are cited in paragraph 132 of HP’s expert report, however, and paragraph 132 is listed in the treatment of claim 13

. J.A. 1357, 2277. Accordingly, the Board did consider the evidence that HP alleges had been neglected.
Moreover, review of SJ5 reveals that the Board’s fin ding that it does not teach a “list of available module means” is supported by substantial evidence. HP’s pet ition doe s not specifically identify what it views as the input, output, and process modules. See J.A. 1357, 1361, 2275, 2277. The only “lists” HP identifies are “lists of destinations, workflows, and the like ,” and the evidence presented does not equate destinat ions or workflows with input, output, or process modules. See J.A. 1357, 1458

– 59 , 1539

. As the Board noted, even at oral argument HP “was unable to specify the relevant names for the process or server modules appearing in a list or lists recited.” Final Decision at *30. Given this evidence, the Board did not err in finding that SJ5 did not teach the required “list of available module means.” Accordingly, we affirm the Board’s finding that claim 13 is not anticipated by SJ5.HP INC

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II. D ECISION TO I NSTITUTE
HP also challenges the Board’s refusal to institute r eview on the basis that th at HP’s obviousness ground in the petition was redundant in view of the institute d anticipation grounds. Before reaching the merits of HP’s argument, we must first address wheth er we have jurisdiction to consider the argument at all. Under 35 U.S.C. § 314 (d)

, “[t]he dete rmination by the Director whether to institute an inter partes review under this section shall be final and nona ppealable.” HP argues that § 314 (d) does not prevent our review of the issue of redundancy because t he “under this se ction” language means that only determinations made under § 314 generally are immune from review. Id. As the only determination in § 314 is the determination whether “the information presented in the petition .

. . and any response .

. . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition,” HP argues, only that determination is immune from review. Appellant’s Br. 24 (quoting 35 U.S.C. § 314(a)). HP argues that

, as a result, the § 314(d) bar does not apply to this case because § 314 does not give the D irector th e authority to refuse to institute review based on a determination of redundancy

. MPHJ and the Director respond that we have interpreted § 314(d) to foreclose review of issues other than the § 314(a) determination. Appellee’s Br. 5

– 7; Intervenor’s Br. 16

– 18, 20

– 24. We agree with MPHJ and the Director that the § 314(d) bar on judicial review is not limited to the dete rmination whether there is a reasonable likelihood that the petitioner would prevail

. In Achates Reference Pu blishing v. Apple Inc. , we specifically rejected as “crabbed and .

. . contradicted by this court’s precedent” the arg ument that the “under this section” language in § 314(d)HP INC

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limited the bar on review . 803 F.3d 652, 658 (Fed. Cir. 2015). Moreover, w e have found that § 314(d) bars our review of aspects of the institution decision other than the § 314(a) determination whether there is a reasonable likelihood that the petitioner would prevail

. SightSound Techs., LLC v. Apple Inc. , 809 F.3d 1307, 1313

– 14 (Fed. Cir. 2015) (refusing to review Board’s consideration of obviousness in the final decision despite not being raised in the initial petition); Achates , 803 F.3d at 658 (refusing to review the Board’s assessment of the time

- bar prov isions of § 315(b)); In re Cuozzo Speed Techs., LLC , 793 F.3d 1268, 1273

– 74 (Fed. Cir. 2015 ), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee , 136 S. Ct. 890 (U.S. Jan. 15, 2016) (No. 15

- 446) (refusing to review the Board’s decision to institute review of certain claims on the basis of prior art not asserted regarding those claims ). Indeed , we recently held that § 314(d) bar s our review of the Board’s decision not to institute IPR on redundancy grounds. See Shaw Indus. Grp., Inc. v. Automated C reel Sys., Inc.

, No s . 15

- 1116, 15

- 1119, ___ F.3d ___, s lip. o p. at 6– 9 (Fed. Cir. Mar

. 23, 2016 ); Harmonic Inc. v. Avid Tech., Inc. , No. 15

- 1072 , ___ F.3d ___, 2016 WL 798192 , at *7–9 (Fed. Cir. Mar

. 1, 2016).

HP next argues that § 314(d) does not bar review of this case because we can review “whether the Board ha [s] properly construed the scope of its authority.” Reply Br. 15 (citing Versata Dev. Grp., Inc

. v. SAP Am., Inc.

, 793 F.3d 1306 (Fed. Cir. 2015) ). HP argues that just as Vers ata addressed th e Board’s determination whether a patent was a covered business method (“CBM”) patent, and therefore whether the Board had the statutory authority to review it, the present case addresses the Board’s stat utory authority. The Director responds that the Boa rd did not exceed its statutory authority by refusing to institute review for redundancy , and therefore Versata does not apply.HP INC

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We agree with the Director that Versata does not require us to review the Board’s institution decision in this

case. V ersata explained that review was proper in that

case because the CBM determination was the “defining characteristic” of the Board’s “authority to invalidate” the patent. Versa ta , 793 F.3d at 1320

– 21. Accordingly, in Achates we concluded that Versata did not permit review of the Board’s application of the § 315(b) time bar because the time bar did “not impact the Board’s authority to invalidate a patent claim

— it only bar [red] particular petitioners from challenging the claim.” 803 F.3d at 657. In that case, the patent could still be challenged “via a properly

- filed petition from another petitioner.” Id. Similarly, a redundancy determination does not i mpact the Board’s authority to find a claim unpatentable

. It only prevents the claim from being challenged on a particular basis in that particular IPR proceeding

. I ndeed, the Director concedes that HP may challenge whether claim 13 is unpatentable as obvious in another petition. Interven or’s Br. 36. As in Achates , then, a refusal to institute review on the basis of redundancy does not impact the Board’s authority to find a claim u npatentable

. HP next argues that the Board does not possess the authority to institute review only on a subset of the grounds presented in the petition for review. Appellant’s B r. 31

– 39. I f the Board determines that there is reason able likelihood that the petitioner would prevail on one claim, HP argues, then the Board must issue a written decision review ing all claims and all grounds properly presented in the petition for revie w. Id. at 31

– 32. The Director responds that the Board may choose to institute

, or not institute, review on any of the grounds presented, if it so chooses, and that § 314(a) only establishes the threshold that must be met for review; it does not compel review.HP INC

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Harmonic addressed whether we could review the Board’s decision to institute review on some, but not all, of the grounds presented in a petition. There, we noted that our prior decisions prohibited rev iew of both the decision to institute an IPR and the decision not to inst itute an IPR. Harmonic , 2016 WL 798192
, at *7 (citing Cuozzo , 778 F.3d at 1276 and St. Jude Med., Cardiology Div., Inc. v. Volcano Corp. , 749 F.3d 1373, 1375

– 76 (Fed. Cir. 2014))

. A s the decision to institute on a subset of grounds was “simply a combination of the two,” we co ncluded that we could not review that decision. Id. A ccor d ingly, Harmonic dictates that § 314(d) bars our review of the decision to institute on only some grou nds

. We also recently addressed whether the Board is required to address all grounds presented in the petition for review, including the grounds on which IPR was not instituted , in its final written decision

. Synopsy s, Inc. v. Mentor Graphics Corp. , No. 1 4- 1516, 2016 WL 520236 , at *3–5 (Fed. Cir. Feb. 10, 2016)

. Relying on the statutory text, we concluded “that the Board need only issue a final written decision with respect to claims on which inter partes review has been initiated and which are challenged by the petitioner after the institution stage.” Id. at *4. Accordingly, the Board i s not required to address claims or grounds for which review had not been instituted in its final written decision

. See id. Together, Harmonic and Synopsys foreclose HP ’s arguments. Therefore, we cannot review HP’s argument that the Board erred by instituting review on only a subset of grounds, and we conclude that the Board did not err in only addressing the instituted grounds in its final written decision.

HP next challenges whether the Board fulfilled its o bligations under the Administrative Procedure Act (“APA”)

. Specifically, HP argues that the Board did not fulfill its APA obligations because it did not address all of the grounds in the petition in its final d ecision. Appellant’ s Br. 47

– 48 (citing 5 U.S.C. § 557(c))

. The Director r e-HP INC

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sponds that the Board met its APA obligations. Interv enor’s Br. 19

– 21. We agree with the Director that the Board met its o bligations under the APA. 2 As we have previously e xplained, “[d]uring the institution phase [of the IPR], the Board establishes parameters that confine the proceeding during the merits phase.” Harmonic , 2016 WL 798192
, at *8

. Accordingly, “ [u]nder the PTO’s regulations, grounds not instituted never become part of the merits phase of the IPR proceeding.” Id. In Harmonic , we upheld those regulations as within the scope of the PTO’s authority. Id. at *9 . Because the noninstituted grounds were never a part of the merits phase of the IPR proceeding, the APA does not require the Board to address those grounds in its final written decision. Here, in the final written decision, the Board addressed, analyzed, and weighed each of HP’s arguments regarding the grounds instituted ; accordingly, the Board met its APA obligations. Finally, HP argues that the Board did not sufficiently articulate the reasons for its redundancy conclusion under the APA. This issue is reviewable, HP argues, due to the strong presumption of judicial review of agency action. The Director responds that § 314(d) show s that Congress intended for the Board’s institution decision to be immune from judicial review. Intervenor’s Br. 19

– 21. We agree with the Director that § 314(d) prevents our review of the Board’s reasons for its redundancy det erm ination. Allowing an APA challenge to the Board’s dec ision to institute on the basis that the Board had insufficiently articulated its reasoning would eviscerate § 314(d) by allowing substantive review of the institution

2 The parties in Synopsys did not raise any APA a rgument , and therefore Synopsys does not control on this point. See Synopsys , 2016 WL 520236, at *3

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decision. Although there is a strong presumption of judicial review of administrative action, that presumption may be overcome where “there is persuasive reason to believe that such was the purpose of Congress.” Bowen v. Mich. Acad

. of Family Physicians

, 476 U.S. 667, 670 (1986). Congress, through § 314(d), has explicitly stated that the Board’ s institution decision “shall be final and nonappealable.” Thus, that specific statutory language precludes our review. HP expresses concern that it will be estopped from challenging clai m 13 in a future proceeding. Specifically, HP worries that 35 U.S.C. § 315(e)(1), which estops a petitioner from requesting review on the basis of any ground that the petitioner “raised or reasonably could have raised” during a previous IPR that led to a final written decision , would preclude subsequent review

. Appellant’s Br. 39. As evidence, HP cites the Board’s decision not to institute review in another proceeding, where the Board concluded that HP could have presented the ground in a previous IPR. Id. As we explained supra , however, the noninstituted grounds do not become a part of the IPR. Accordingly , the noninstituted grounds were not raised and, as review was denied, could not be raised in the IPR . Therefore, the estoppel provisions of § 31 5(e)(1) do not apply. See Shaw

, slip op. at 10

– 11. Indeed, the Direc tor concedes that “HP is not estopped from raising the obviousness of claim 13 in a subsequent court or Board proceeding, and a challenger cannot assert that the nonobviousness of claim 13 was resolved by the Board in this proceeding.” Intervenor’s Br. 36. Accordingly, we cannot review the Board’s refusal to institute IPR on redundancy grounds , and we find that the final written decision meets the agency’s obligations under the APA

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C ONCLUSION
We have considered HP ’s remaining arguments, but find them unpersuasive. For the foregoing reasons, the decision of the Board is affirmed.

AFFIRMED