Federal Circuit Addresses Reviewability of Petition Scope, Affirms PTAB Treatment of Prior Art

The Federal Circuit’s IBM v. Zillow decision (Appeal No. 24-1170) clarifies the scope of Section 314(d)’s bar to reviewing institution decisions and reaffirms that patent owners may still challenge final written decisions that exceed the petition’s scope, consistent with Koninklijke Philips, notwithstanding Lone Star. The Federal Circuit also reiterated that anticipation analyses may properly rely on a skilled artisan’s background knowledge without converting the analysis into an obviousness…
By: Morgan Lewis