Today in HP Inc. v. MPJH Technology Investments, LLC, __ F.3d __ (Fed. Cir. 2016)(Lourie, J.), petitioner in a merits appeal to the PTAB unsuccessfully challenged denial of institution of inter partes review on a specific ground deemed “redundant” amongst its eight grounds presented in its petition (and thus denied consideration).

Failure to Selectively Choose Grounds for Invalidity, a Warning!:  The particular “redundant” ground was one of eight (8) grounds presented in the original petition. Petitioner unsuccessfully sought to reopen the “redundant” (denied) ground in its merits appeal. The Board cited Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., ___ F.3d ___, ___, slip. op. at 6–9 (Fed. Cir., 2016); and Harmonic Inc. v. Avid Tech., Inc., ___ F.3d ___, ___ slip op. at 7–9 (Fed. Cir. 2016), for the proposition “that § 314(d) bars [PTAB] review of the Board’s decision not to institute IPR on redundancy grounds.”

PTAB’s Promise of a Second Bite at the Apple:  The PTAB panel suggests that Petitioner has a remedy by filing a second proceeding:  “[A] redundancy determination *** only prevents the claim from being challenged on a particular basis in that particular IPR proceeding.  *** [Petitioner] may challenge whether [the claim] is unpatentable as obvious in another petition. As in Achates [Reference Publishing v. Apple Inc.,803 F.3d 652 (Fed. Cir. 2015)], then, a refusal to institute review on the basis of redundancy does not impact the Board’s authority to find a claim unpatentable.” (citation omitted).

Redundant “Placekeeper” Ground for a Future Challenge: HP v. MPJH Technology implicitly teaches the merits of presenting a “redundant” ground in a petition as an insurance policy to keep the door open to an estoppel-free second patent challenge.