By Jordan Powers and Dave Maiorana

In SAS Institute v. Iancu, the Supreme Court held that when the PTAB institutes inter partes review under 35 U.S.C. § 314, it must decide the patentability of all claims the petitioner has challenged. SAS Institute left open the question of how the PTAB should handle the binary application of 35 U.S.C. § 314, especially for grounds that it finds lack a reasonable likelihood of success at institution. According to a recent PTAB decision, the Board held that is able to reach a final written decision on all claims, even those it criticizes or questions in the institution decision.

The PTAB addressed two IPRs, one requested by Cisco Systems and Oclaro, and another by Nokia, both challenging claims in a patent owned by Oyster Optics. Prior to SAS Institute, the Board partially instituted IPR, excluding from review those claims and grounds that it found lacked a reasonable likelihood of success. In response to SAS Institute, the Board modified its institution decision to include all of the claims and grounds presented in the petitions. In response to this modification, the Patent Owner asserted that the issuance of a final written decision in the case would be improper and sought dismissal of the petitions. The PTAB rejected this challenge in its final written decisions. Cisco Systems Inc. et al. v. Oyster Optics, LLC, IPR2017-01874, Paper No. 28 (PTAB, Feb. 13, 2019); Nokia of America Corp. et al. v. Oyster Optics, LLC, IPR2017-02146, Paper No. 40 (PTAB, Feb. 13, 2019) (the portions of the final written decisions addressing this issue are identical).

The Patent Owner had contended that the PTAB’s modification of its initial institution decision was an improper attempt to address “how to govern a proceeding in which all challenged claims are included but where a petitioner has failed to establish a reasonable likelihood of prevailing with respect to certain claims.” According to the Patent Owner, issuing a final written decision with respect to the claims the Board had determined lacked a reasonable likelihood of success is “contrary to and specifically rejected by the regulations promulgated by the Agency to govern inter partes review.” Therefore, the modification was an attempt at rulemaking by the Board, in conflict with 35 U.S.C. § 316.

The PTAB disagreed and found that “the current rules already cover the situation” and do not preclude it from reaching a final written decision with respect to claims and grounds it initially determined petitioners had failed to establish a reasonable likelihood of success. The Board noted that “[n]one of these referenced [regulations] requires exclusion of any claim or ground from an instituted proceeding – including those for which the Board has determined that Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability.” The Board highlighted a recent case in which it had instituted review of all the claims and grounds, upon finding a reasonable likelihood of success with respect to one claim. FMC Techs., Inc. v. OneSubsea IP UK Ltd., IPR2016-00378, Paper No. 7 (PTAB, June 30, 2016).

The Patent Owner also argued that the modification was untimely under 35 U.S.C. § 314(b). According to the Patent Owner, the Board failed to comport with 35 U.S.C. § 314(b)’s mandatory timing of institution decisions, which requires the PTAB to issue an institution decision within three months of the patent owner’s preliminary response. Though the Board’s original institution decision fell within this window, “the Board’s complete determination whether to institute,” per the modified institution decision, did not occur within the time period required by the statute.

The PTAB rejected this argument, finding that it had not violated the timing requirements because the initial institution decision met the statutory due date. The Board clarified that the modified institution decision corrected the scope of review, but this did not make the original institution decision “null and void” for purposes of 35 U.S.C. § 314(b). The Board noted that “SAS Institute did not preclude a scope correction by the Board, including where the time of correction is after the due date for the Board to decide whether to institute review.”

Takeaways

The PTAB’s view is that it can issue a final written decision on the patentability of all claims challenged in the petition, including those for which it determined the petitioner had not established a reasonable likelihood of success at institution. So long as petitioners establish reasonable likelihood of success as to one claim, the PTAB holds that it can issue a written final decision on all claims challenged in the petition.

Further, the PTAB held that it has the authority to modify its institution decisions to include those claims and grounds that it had previously found lacking. The Board characterized this as a scope of review correction, and held that the relevant date for determining compliance with 35 U.S.C. § 314(b)’s timing requirements is the date of the initial institution decision.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.