In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when articulated correctly, can be two Grounds -- alternative single-reference and two-reference Grounds. Here, each petition included the general statements: (A) Ref 1 teaches all the claim features but (B) if Ref 1 lacks feature X, then Ref 2 teaches the feature. The Federal Circuit held they will read this part of the petition as asserting both (A) a one-reference Ground, and if that reference lacks feature X then (B) a two reference obviousness Ground. This appears to be true even if the statement of the grounds lacks an articulation of this alternative theory of invalidity.

Since 2012 many Patent Owners have argued, and the PTAB has generally agreed, for a petition to comply with the statute and rules each ground must be listed in the statement of grounds and separately argued within the petition. Without the statement of grounds explicitly stating that the Petitioner is arguing two grounds, and a separation of grounds within the arguments section, Patent Owners have argued neither they nor the Board can properly evaluate, and respond to, the merits in the petition.

On the other hand, there are many instances where petitioners may believe that a main reference actually teaches all the features of a claim under their proffered meaning of a controversial claim term, but a secondary reference may be needed, in the event that the Board disagrees with their proposed claim construction(s). Or, there are also cases where, although the main references at least suggest a teaching, a secondary reference explicitly teaches the claim term and fills any potential gaps in the main reference. In both cases, petitioners may now feel more encouraged that they can meet the statute and rules using the language found in the Realtime and Polygroup petitions.

In the end, Patent Owner challenges of this alleged posturing by a Petitioner may be weakened by these Federal Circuit decisions. For now, however, the Rules still require petitioners to “identify the specific statutory grounds on which the challenge to the claim is based and the patents or printed publications relied upon for each ground.” 37 C.F.R. § 42.104(b)(4). But, there must still be a line between (a) cases where petitioners articulate the alternative-ground language of Realtime and Polygroup and (b) cases where petitioners fail to clearly articulate the grounds and require the Board to play archeologist with the record.

Only time will tell if the PTAB changes its current position and whether Patent Owners can use a different line of attack in this situation to show the petition is deficient warranting denial.