PTAB Need Not Address Underdeveloped Arguments in IPR Petitions

Written by: Emily K. McCorry & Jeremy Anapol

NETFLIX, INC. V. DIVX, LLC

Before Dyk, Linn, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB did not abuse its discretion by declining to address arguments that an IPR petitioner failed to clearly raise in its petitions.

Netflix requested inter partes review of two patents assigned to DivX.  The Patent Trial and Appeal Board (“PTAB”) found that Netflix failed to prove the challenged claims unpatentable. Netflix appealed, contending that the PTAB overlooked or misinterpreted several arguments in Netflix’s petitions.

The Federal Circuit reviewed the decisions below, including the PTAB’s interpretation of Netflix’s petitions, for abuse of discretion.  Because the arguments Netflix raised on appeal were not clearly present in the petitions, and the PTAB did not clearly misinterpret them, the Federal Circuit affirmed.

Judge Dyk dissented, arguing that Netflix’s petitions properly presented some of the arguments that Netflix raised on appeal.

Editor: Sean Murray