Shaw Indus. Group v. Automated Creel Sys., Inc., No. 15-1116 (Fed. Cir. 2016)Annotate this Case
ACS's patent relates to “creels” for supplying yarn and other stranded materials to a manufacturing process. ACS sued Shaw for infringement, but voluntarily dismissed the suit without prejudice. Within one year of service of the complaint (35 U.S.C. 315(b)), Shaw sought inter partes review (IPR), proposing 15 grounds of rejection. Most of the grounds were directed to the non-interposing claims, but two grounds alleged that interposing claims would have been obvious over German patents and another alleged that interposing claims were anticipated by a U.S. patent (Payne). Ultimately, the Patent Board found that Shaw had not shown by a preponderance of the evidence that the interposing claims were unpatentable based on the instituted grounds, but had shown by a preponderance of the evidence that the non-interposing claims were unpatentable based on the instituted grounds. The Federal Circuit affirmed in part, agreeing that dismissals without prejudice leave the parties as though the action had never been brought and finding that it lacked jurisdiction to review the Board’s decision not to institute IPR on the Payne-based ground, including its decision not to consider the Payne-based ground in its final decision. The court vacated in part, finding the Board’s decision as to “tube Q” ambiguous at best, and remanding for fact findings.