Background
Koninklijke Philips N.V. (Philips) owned a patent related to digital video broadcasting — specifically, a method for transmitting program-specific information in a compressed digital video stream. Google filed a petition for inter partes review (IPR) challenging several claims of the patent on multiple obviousness grounds using various prior art combinations.
The Patent Trial and Appeal Board (PTAB) instituted IPR but went beyond what Google had requested. In its institution decision, the Board introduced an obviousness combination that had not appeared in the petition — essentially substituting its own prior art theory for the one the petitioner had advanced. Philips challenged this at the PTAB level and then appealed to the Federal Circuit after the Board ultimately found the claims unpatentable.
The case turned on whether the PTAB has authority to institute review on grounds it devises itself, or whether it is strictly limited to grounds the petitioner raised in the petition.
The Court’s Holding
The Federal Circuit vacated and remanded. The court held that the Board violated 35 U.S.C. § 312(a)(3), which requires that an IPR petition identify with particularity the grounds on which the challenge is based, when it substituted its own obviousness theory for the one Google had petitioned on. The Board is empowered to institute review based on the grounds in the petition — it cannot launch its own investigation into prior art not raised by the challenger.
The court grounded its analysis in the Supreme Court’s decision in SAS Institute Inc. v. Iancu (2018), which held that the Board must address all grounds raised in a petition if it institutes review. The Federal Circuit extended that logic in the other direction: just as the Board cannot ignore petitioned grounds, it cannot add grounds the petitioner never advanced. The statute creates a petitioner-controlled scope for institution, and the Board functions as an adjudicatory body, not an independent examiner.
Key Takeaways
- The PTAB can only institute IPR on the specific grounds raised in the petition — it cannot substitute its own prior art theories or create new obviousness combinations during institution.
- This decision reinforces SAS Institute by confirming the PTAB’s role as an adjudicatory body limited to the issues the petitioner presents, not an independent fact-finder that can freelance new theories.
- Patent owners defending against IPR petitions should monitor whether the Board’s institution decision tracks the petition exactly, and preserve objections if the Board deviates from the petitioned grounds.
- Petitioners should draft their petitions comprehensively because the Board cannot rescue an inadequate petition by devising alternative theories on its own.
Why It Matters
This decision has significant practical consequences for how IPR proceedings work. Before Koninklijke Philips, some PTAB panels would occasionally adjust the prior art theory or combination at institution to fix perceived weaknesses in a petitioner’s arguments. The Federal Circuit closed that door: the PTAB is a creature of statute, and its power to institute is defined and limited by what the petitioner asks for.
For patent owners, the ruling provides a meaningful safeguard — if a petitioner’s theory is poorly developed or relies on the wrong prior art combination, the Board cannot save the challenge by inventing a better one. For petitioners and defendants seeking to invalidate patents, it underscores the importance of front-loading comprehensive prior art analysis and crafting the petition with precision, since there are no second chances once institution occurs on limited grounds.