United States Court of Appeals 

for the Federal Circuit ______________________ 

HP INC.,

Appellant

v.

MPHJ TECHNOLOGY INVESTMENTS, 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

______________________ 

CHARLENE M. MORROW, Fenwick & West, LLP, Mountain View, CA, argued for appellant. Also represented by 

STUART P. MEYER, RAVI RAGAVENDRA RANGANATH. 

VIVEK GANTI, Hill, Kertscher & Wharton LLP, Atlanta, GA, argued for appellee. Also represented by STEVEN 

G. HILL. 

AMY J. NELSON, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor Michelle K. Lee. Also represented by THOMAS 
2 HP INC. V. MPHJ TECH. INVS. 

W. KRAUSE, SCOTT WEIDENFELLER, JOSEPH GERARD

PICCOLO. 

______________________ 

Before LOURIE, SCHALL, and HUGHES, Circuit Judges. 

LOURIE, 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”), unpatentable as anticipated, and finding claim 13 of the ’381 patent 

not unpatentable as anticipated. See Hewlett-Packard Co. 

v. MPHJ Tech. Invs., 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 challenges the Board’s 

decision not to review whether claim 13 is unpatentable

as obvious. Because the Board did not err and because we 

cannot review the decision not to institute, we affirm. 

BACKGROUND

MPHJ is the owner of the ’381 patent, entitled “Distributed 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 including a server module comprising:
HP INC. V. MPHJ TECH. INVS. 3

enable virtual copy operation means for initiating, 

canceling, and resetting said computer data management system;

maintain list of available module means for maintaining 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 maintaining another 

copy of said list in a modules object accessible by 

said input, output, client, process and server 

modules; 

maintain currently active modules means for 

maintaining said input, output, and process modules currently being used for a current computer 

data management system copy operating in a program object, and saving the currently active modules in a process template file; and 

maintain complete document information means 

for maintaining information regarding a current 

file being copied, and saving 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 businesses 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 connected 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 multifunction printers, HP petitioned for IPR of the ’381 pa-
4 HP INC. V. MPHJ TECH. INVS. 

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 anticipation 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 unpatentable as anticipated 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 SJ5 scanner (“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 anticipated by either Cotte or SJ5. J.A. 33, 38. The Board declined to institute review based on the other asserted 

grounds of unpatentability, concluding that “[t]he additional grounds are . . . redundant in light of the determination 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 adoption of the Leahy-Smith America Invents Act, Pub. L. No. 

112-29, § 3, 125 Stat. 284, 285–93 (2011), the prior version of § 102 governs this appeal. See Fleming v. Escort, 

Inc., 774 F.3d 1371, 1374 n.1 (Fed. Cir. 2014). 
HP INC. V. MPHJ TECH. INVS. 5

HP did not seek rehearing of that 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 regarding 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 disclosed 

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 argument, 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 unpatentable as anticipated by SJ5. Id. at *29–30. The 

Board noted that HP did not respond to MPHJ’s arguments 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 limitations in claim 13 . . . , those claims recite different elements.” Id. at *30. Finally, the Board found that HP did 

“not specify clearly how SJ5 discloses all the recited and 

argued elements” because HP did not “specify the required lists of modules.” Id. Accordingly, the Board 

found that HP had not met its burden of establishing the 

unpatentability of claim 13. 
6 HP INC. V. MPHJ TECH. INVS. 

HP timely appealed, and the Director of the U.S. Patent and Trademark Office (the “Director”) intervened 

pursuant to 35 U.S.C. § 143, filing a brief and participating 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). 

DISCUSSION

I. ANTICIPATION

“Anticipation is a question of fact reviewed for substantial evidence.” In re Rambus, Inc., 753 F.3d 1253, 

1256 (Fed. Cir. 2014). A finding is supported by substantial evidence if a reasonable mind might accept the evidence 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 findings are not supported by substantial evidence. Specifically, HP argues that although the Board asserted that 

HP’s arguments relating to claim 13 were a repetition of 

the arguments HP had made with respect to claims 1, 2, 

and 7, HP had also referenced arguments and evidence 

presented relating 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 available 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 that 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. Id. at 15–19. 
HP INC. V. MPHJ TECH. INVS. 7

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 does not directly state that it considered 

the evidence relating to claim 9, that evidence is almost 

identical to the evidence that HP presented with respect 

to claim 13. J.A. 2275, 2277. As 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 in 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 finding that it does not teach a “list of available module 

means” is supported by substantial evidence. HP’s petition does 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 destinations 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. 
8 HP INC. V. MPHJ TECH. INVS. 

II. DECISION TO INSTITUTE

HP also challenges the Board’s refusal to institute review on the basis that that HP’s obviousness ground in 

the petition was redundant in view of the instituted 

anticipation grounds. 

Before reaching the merits of HP’s argument, we must 

first address whether we have jurisdiction to consider the 

argument at all. Under 35 U.S.C. § 314(d), “[t]he determination by the Director whether to institute an inter 

partes review under this section shall be final and nonappealable.” 

HP argues that § 314(d) does not prevent our review

of the issue of redundancy because the “under this section” 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 Director 

the 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 determination whether there is a reasonable likelihood that 

the petitioner would prevail. In Achates Reference Publishing v. Apple Inc., we specifically rejected as “crabbed 

and . . . contradicted by this court’s precedent” the argument that the “under this section” language in § 314(d) 
HP INC. V. MPHJ TECH. INVS. 9

limited the bar on review. 803 F.3d 652, 658 (Fed. Cir. 

2015). Moreover, we 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 provisions 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) bars our review of 

the Board’s decision not to institute IPR on redundancy 

grounds. See Shaw Indus. Grp., Inc. v. Automated Creel 

Sys., Inc., Nos. 15-1116, 15-1119, ___ F.3d ___, slip. op. 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 Versata addressed the 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 statutory authority. The Director responds that the Board did 

not exceed its statutory authority by refusing to institute 

review for redundancy, and therefore Versata does not 

apply. 
10 HP INC. V. MPHJ TECH. INVS. 

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

case. Versata 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. Versata, 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 impact 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. Indeed, the Director concedes that HP may challenge 

whether claim 13 is unpatentable as obvious in another 

petition. Intervenor’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 unpatentable. 

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

Br. 31–39. If the Board determines that there is reasonable likelihood that the petitioner would prevail on one

claim, HP argues, then the Board must issue a written 

decision reviewing all claims and all grounds properly 

presented in the petition for review. 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. V. MPHJ TECH. INVS. 11

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 review of both the 

decision to institute an IPR and the decision not to institute 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)). As the decision to institute on a subset of 

grounds was “simply a combination of the two,” we concluded that we could not review that decision. Id. Accordingly, Harmonic dictates that § 314(d) bars our 

review of the decision to institute on only some grounds. 

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. Synopsys, Inc. v. 

Mentor Graphics Corp., No. 14-1516, 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 is 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 obligations 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 decision. Appellant’s 

Br. 47–48 (citing 5 U.S.C. § 557(c)). The Director re-
12 HP INC. V. MPHJ TECH. INVS. 

sponds that the Board met its APA obligations. Intervenor’s Br. 19–21. 

We agree with the Director that the Board met its obligations under the APA.2 As we have previously explained, “[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) shows 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 determination. Allowing an APA challenge to the Board’s decision 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 argument, and therefore Synopsys does not control on this 

point. See Synopsys, 2016 WL 520236, at *3–6.
HP INC. V. MPHJ TECH. INVS. 13

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 claim 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 § 315(e)(1) do not apply. See Shaw, 

slip op. at 10–11. Indeed, the Director 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. 
14 HP INC. V. MPHJ TECH. INVS. 

CONCLUSION

We have considered HP’s remaining arguments, but 

find them unpersuasive. For the foregoing reasons, the 

decision of the Board is affirmed.

AFFIRMED