The Board has the discretion to institute review on all or some of the challenged claims and on all or some of the ground of unpatentability asserted for each claim. 35 U.S.C. §§ 314(a) and 324(a); 37 C.F.R. §§ 42.108 and 42.208.
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). The Board is not required to issue a final written decision for all clams challenged in a petition. 35 U.S.C. § 318(a) requires the Board to issue a final written decision with respect to “any patent claim challenged by the petitioner.” 35 U.S.C. § 318(a) only applies to claims for which the IPR was instituted, not every claim challenged in the petition. 35 U.S.C. § 314(a) allows the Board to institute inter partes review on a claim-by-claim basis. The decision of the Board to institute review as to some or all claims challenged is not reviewable under § 314(d). A final written decision will have a limited estoppel effect for claims whose review the Board did not institute.
10X Genomics, Inc. v. Raindance Technologies, Inc., IPR2015-01558, Paper 18 (PTAB Feb. 24, 2016). The Board denied patent owner’s request for rehearing of the decision instituting review. “The Decision was issued pursuant to the Board’s authority under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) and (c)…Under these provisions, the Board may institute inter partes review based on the information presented in the petition. That is, none of these provisions precludes the Board from instituting inter partes review of a challenged claim based on a ground of unpatentability that is implicitly, but not explicitly, raised in a petition.” Citing the Federal Circuit’s decision in SightSound Techs., LLC v. Apple Inc., the Board does not exceed its authority by considering whether challenged claims are unpatentable based on obviousness, where the petition asserts anticipation, but not obviousness, as to those claims. The obviousness grounds are based upon the same arguments and evidence that petitioner presents with respect to anticipation. Patent owner addressed these arguments in its preliminary response, and the Board considered patent owner’s arguments before instituting review. Patent owner will have another full and fair opportunity to respond to these challenges in its patent owner response.
Sandisk Corp. v. Netlist, Inc., IPR2014-00970, Paper 34 (PTAB Apr. 27, 2016). Petitioner challenged several claims as being unpatentable over the Huang and Tsern references. In the institution decision, the Board denied institution of review of those claims as being unpatentable over the Huang and Tsern references, but instituted review of the claims as being obvious over Huang alone. In the final written decision, the Board faulted petitioner for not identifying support in the petition for unpatentability of the claims based on Huang alone, and determined that petitioner’s reply exceeded the proper scope of a reply. Petitioner requested rehearing. In denying rehearing, the Board indicated that petitioner’s arguments are based on an underlying contention that, because the Board sua sponte raised a patentability challenge based on Huang alone, whereas petitioner’s challenge was based on a combination of Huang and Tsern, the Board relied on evidence that was not cited in the petition. The Board, however, indicated that petitioner did not identify any indication in the institution decision where the Board relied on evidence other than that expressly cited by petitioner. The Board was not persuaded of error in its determination that petitioner’s arguments and evidence in the reply are outside the scope of a proper reply because they do more than merely address patent owner’s argument that the petition does not identify a disclosure or suggestion of the limitations of the challenged claims. Rather, petitioner’s reply attempted to provide a new theory for modifying Huang that was not set forth clearly in the petition.
SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2015-01790, Paper 14 (PTAB Feb. 19, 2016). Petitioner challenged claims 15-22 as being “not new under 35 U.S.C. § 101” over claims 1-14 of the same patent which were determined to be unpatentable in a previous IPR proceeding. The Board denied institution for this challenge because it did not present a proper basis for instituting inter partes review under 35 U.S.C. § 311. § 311(b) provides that a petitioner may challenge a patent only a ground that could be raised under § 102 or § 103 and only on the basis of prior art consisting of patents or printed publications.
Par Pharmaceutical, Inc. v. Novartis AG, IPR2016-00084, Paper 21 (PTAB June 30, 2016). The Board denied patent owner’s request for rehearing of the institution decision. The Board disagreed with patent owner’s argument that the Board erred in not specifically addressing all of patent owner’s arguments in the preliminary response. The Board indicated that it is not required to “address every argument raised by a party or explain every possible reason supporting its conclusion.” Synopys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016). “This is especially true in the context of an institution decision, where the Board’s findings are preliminary and its determination whether a reasonable likelihood of prevailing exists is not subject to appellate review.”
South-Tek Sys., LLC v. Engineered Corrosion Sols., LLC, IPR2016-00136, Paper 24 (PTAB Aug. 8, 2016). In denying patent owner’s request for rehearing of the decision granting institution, the Board rejected patent owner’s argument that it improperly relied on portions of an asserted reference not cited in the petition. The Board is entitled to rely on its own reading of the evidence to explain or support its analysis, and to determine the merits of the parties’ positions. At the institution stage, the Board is not changing the theories of the trial, because there is no trial until after the institution stage. The Board’s decision was based on the same combination of references set forth in the petition. Patent owner has an opportunity to respond to the petition and the institution decision in the patent owner’s response. The parties are on notice of the issues to be addressed during the trial.
Maxlinear, Inc. v. Cresta Tech. Corp., IPR2015-00594, Paper 90 (PTAB Aug. 15, 2016). The Board declined to consider petitioner’s arguments in the petitioner reply that an asserted reference qualified as prior art under 35 U.S.C. § 102(a) and therefore made the reference ineligible for disqualification under 35 U.S.C. § 103(c). Patent owner argued that the petition did not assert § 102(a), and no ground of unpatentability was instituted on § 102(a). Petitioner’s argument is not prohibited by 37 C.F.R. § 42.23(b) because it is in response to patent owner’s argument in the response that the reference was not prior art under § 102(a). However, that does not end the inquiry. Prior to filing its petition, petitioner knew from patent owner’s contentions in the ITC proceeding that the safe haven of § 103(c) was a potential issue. Even armed with this knowledge, petitioner chose not assert in the petition that the asserted patent is prior art under § 102(a). Adding consideration of § 102(a) at this late date would deprive patent owner of due process. On this basis, the Board declined to consider petitioner’s argument that the asserted reference qualifies as prior art under § 102(a).
Masterimage 3D, Inc. v. RealD Inc., IPR2015-00400, Paper 91 (PTAB Sept. 1, 2016). In denying patent owner’s request for rehearing a final written decision finding the challenged claims unpatentable, the Board rejected patent owner’s argument that the petition was deficient for not setting forth a prima facie case of obviousness. Whether petitioner made a prima facie case of obviousness is a non-issue and can be characterized fairly as a red herring. After institution of trial in an IPR, and at the stage of rendering a final written decision, the question is whether, on the basis of the entirety of the evidence before the Board, both for and against obviousness, petitioner has proved unpatentability by a preponderance of the evidence. At the stage of the final written decision, whether petitioner presented a prima facie case, in the petition alone, is not the issue.
Oxford Nanopore Techs. Ltd. v. Univ. of Wash., IPR2014-00513, Paper 55 (PTAB May 20, 2016). The Board denied petitioner’s request to dismiss grounds of challenge once the Board determined that petitioner had not demonstrated that references asserted in the grounds of challenge did not qualify as printed publications. Petitoner argued that once the Board determined that the asserted reference did not qualify as printed publications, the Board should have dismissed those grounds for lack of jurisdiction, since the Board may only consider challenges based on patents and printed publications under 35 U.S.C. § 311(b). Citing the Board’s precedential decision in Lumentum, IPR2015-00731, Paper 39 (PTAB Mar. 2, 2016), § 311(b) does not define the Board’s jurisdiction. “§ 311(b) is a limitation on the grounds of unpatetentability that petitioner may advance in its petition and says nothing about whether or when the Board may exert jurisdiction over the petition.”
Tyco Fire Prods. LP v. Victaulic Co., IPR2016-00278, Paper 13 (PTAB Sept. 7, 2016). The Board denied petitioner’s request for rehearing of the Board’s decision to not institute review of independent claims 1 and 9 on an obviousness ground despite instituting review for dependent claims 2 and 10, which depend from claims 1 and 9, respectively, on that obviousness ground. The Board has discretion to institute trial on an independent claim not challenged in a petition if the Board institutes trial on a claim that depends from the independent claim. Discretion to institute is not an obligation to institute. If, at the end of trial in the IPR proceeding, dependent claims 2 and 10 are determined to be unpatentable, that determination will extend to independent claims 1 and 9. The converse, however, is not true. If the Board determines that petitioner has not demonstrated that claims 2 and 10 are unpatentable, that determination does not extend to broader independent claims 1 and 9. Petitioner, however, did not challenge claims 1 and 9 on the obviousness grounds instituted for claims 2 and 10. Instituting trial for claims 1 and 9 would require both speculation by the Board as to petitioner’s position and a search of the record for evidence to support the Board’s speculation. Neither speculation as to petitioner’s position nor a search through the record for evidence to support petitioner’s position is the role of the Board.
Innovative Environmental Techs., Inc. v. Peroxychem LLC, IPR2016-00198, Paper 17 (PTAB July 25, 2016). In rendering a decision to institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability. Rather, the Board determines whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more.