By Kerry Barrett and Dave Maiorana

On April 5, 2019, the PTAB designated as informative two decisions relating to 35 U.S.C. § 314(a):

  • IPR2018-00923, Paper 9 (Nov. 7, 2018) (designated: Apr. 5, 2019) [AIA § 314(a), insufficient number of proposed grounds/challenges to claims meet reasonable likelihood standard]; and
  • IPR2018-01310, Case IPR2018-01310, Paper 7 (Jan. 24, 2019) (designated: Apr. 5, 2019) [AIA § 314(a), insufficient number of proposed grounds/challenges to claims meet reasonable likelihood standard].

Section 314(a) reads:

(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

Under Section 314(a), institution of IPR proceedings is discretionary.  In SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that if the PTAB institutes IPR proceedings, it must issue a final written decision addressing every patent claim challenged in an IPR petition.  Thus, the Supreme Court’s holding barred partial institution.

In each of the designated cases listed above, the Board concluded that instituting IPR proceedings as to all claims on all grounds would not be an efficient use of the Board’s resources when Petitioners demonstrated a reasonable likelihood of prevailing on only 2 of 20+ challenged claims.  For more information on the procedural posture, see Overreaching May Result In Denial of Petition.

These decisions forewarn petitioners against mounting overly broad attacks on a patent’s validity in light of the SAS “all or nothing” institution requirement.  They demonstrate the risk in presenting all grounds — even those unlikely to succeed — in one petition, because if all grounds are denied, the petitioner will have to litigate invalidity entirely at the district court.  However, the estoppel provision of 35 U.S.C. § 315(e)(2) prevents petitioners from “raising in a subsequent challenge the same patent issues that were raised or reasonably could have been raised in a prior challenge.”  Thus, petitioners must weigh the choice between a broad attack on validity (and resulting risk of institution denial) and the effect of the estoppel provision.  One petitioner filing strategy has emerged in response: filing multiple petitions.  For more information, see: Seeing Multiple: Observations from Petitioner Filing Strategies Following SAS.

Patent owners should investigate using these decisions in a preliminary response to persuade the Board not to institute IPR proceedings as an inefficient allocation of the Board’s resources.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.