First Steps After SAS Institute

Guest post by Saurabh Vishnubhakat, Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering.  Although Prof. Vishnubhakat was an advisor at the USPTO until June, 2015, his arguments here should not be imputed to the USPTO or to any other organization.

The Supreme Court’s decision in SAS Institute v. Iancu is likely to prove more immediately impactful to the status quo than the accompanying decision in Oil States Energy Services v. Greene’s Energy Group. The power of partial institution had been an integral part of the Patent Trial and Appeal Board’s decision-making from the start, and the all-or-nothing choice that the PTAB must now make raises four interrelated questions. One is how the agency will proceed in future cases. Another, and more pressing, is how the agency will deal with the crop of currently pending cases that were instituted as to some, but not all, patent claims in the original petition. Still another is how the litigants themselves, particularly would-be petitioners, will frame their challenges going forward. Finally, there is the question of what steps the Patent Office might take given its own altered incentives.

NB: The SAS Institute decision was the subject of a robust discussion at the April 26 Stanford IP Law and the Biosciences Conference panel on “Developments at the PTAB and the Federal Circuit.” I am indebted to my co-panelists Mark Lemley, David O’Brien, and Stefani Shanberg and to our moderator Lisa Larrimore Ouellette for sharpening my thinking on this developing issue.

Parsing the PTAB Guidance—Future Petitions

A helpful place to begin is the PTAB’s prompt and thoughtful Guidance on the Impact of SAS on AIA Trial Proceedings, issued just two days after the SAS Institute decision. As this blog pointed out in its recap of the Guidance, future petitions will be instituted as to all claims or as to none, as SAS Institute directly requires.

The Guidance goes further, however, to indicate that “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” This is notable because a “challenge” may be as broad as to refer to the statutory basis asserted for the invalidity of a claim, or to the prior art cited in support, or to both. For example, even if an inter partes review petition sought to invalidate just one patent claim, asserting both statutory grounds (§ 102 and § 103) and citing only two prior art references could conceivably constitute five separate “challenges” for purposes of an institution decision:

  • anticipation in light of Reference A;
  • anticipation in light of Reference B;
  • obviousness in light of Reference A;
  • obviousness in light of Reference B; and
  • obviousness in light of the combination of References A and B.

It is not self-evident that this additional step is required by the opinion in SAS Institute, which focuses on patent claims—claims that the petitioner challenged in its petition and claims as to which 35 U.S.C. § 318(a) requires a final written decision. Nevertheless, it was the same regulation, 37 C.F.R. § 42.108(a), that articulated the authority to proceed both “on all or some of the challenged claims and on all or some or the grounds of unpatentability asserted for each claim.” It is appropriately cautious, then, for the agency to step back from both together. Moreover, the Federal Circuit’s recent string of cases remanding decisions back to the PTAB for further explanation under the Chenery doctrine also makes it sensible for the agency to err on the side of inclusion when it comes to fully exploring the potential grounds for its eventual decision. More on that in a bit.

Parsing the PTAB Guidance—Currently Pending Cases

As for what to do with still-pending cases in which the PTAB has already made partial institutions, the Guidance states a policy that may seem surprising on first impression. In such cases, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition” (emphasis added). In other words, now that the Court has made institution an all-or-nothing proposition, the PTAB may go back and retroactively grant institution as to the rest of the petition.

What makes this policy puzzling is its apparent discretion. After SAS Institute, is the PTAB not required to issue such an order instituting the additional challenged claims?

Not necessarily. For one thing, institution is not even the only retroactive thing that the PTAB can do in this situation. Though the Guidance does not mention it, the PTAB could instead retroactively deny the entire petition (including what had previously been instituted). The reason why both of these approaches are viable is the structure of the institution standard in § 314(a): the Director, it says, may not institute unless there is a reasonable likelihood that at least 1 of the claims challenged in the petition will be canceled. This “may not . . . unless” framing means that a reasonable likelihood of success is a necessary condition, but it may or may not be a sufficient condition. Once the standard is met, whether or not to institute is discretionary. This much even the Court’s opinion accepted:

The text says only that the Director can decide “whether” to institute the requested review—not “whether and to what extent” review should proceed.

Slip op. at 8 (emphasis in original). Along similar lines, the Court also pointed out that “the language anticipates a regime where a reasonable prospect of success on a single claim justifies review of all”—justifies, not compels.

For another thing, the parties themselves may render such a supplemental order unnecessary. A joint request to terminate the case, particularly where the PTAB has yet to decide the merits, has potential benefits. Under § 317(a), the settling petitioner in such a case would escape without estoppel attaching. The patent owner, meanwhile, would likely receive a termination of the IPR altogether. It is true that § 317(a) gives the agency the power to proceed to a final written decision even after all petitioners have exited the case. However, in this of all situations, it would be a poor solution indeed for the PTAB to force itself into a final written decision on claims that it previously denied under the expectation that it would not have to issue final written decisions as to them. The mid-stream disruption that SAS Institute creates for existing cases may make settlement and jointly requested termination attractive not only to the parties but also to the PTAB.

For these reasons, a supplemental order granting institution as to all additional claims in the original petition—while permissible and perhaps even desirable—is not necessary for the PTAB to issue.

Litigant Incentives

While these pending cases are straightened out, of course, new would-be petitioners continually face a choice about whether and how to frame their petitions. For them, the stakes are now undoubtedly higher. Apart from cost constraints (including the PTAB’s recent fee increase before the SAS Institute decision was handed down) and page limits on petitions (which are difficult to circumvent only as a matter of additional cost), petitioners faced little disincentive against being overinclusive in their challenges. The possibility of partial institution meant that, so long as some arguments made it through, the remainder were not necessarily any great loss.

But now, a full denial of institution is a real possibility even for petitions that may contain some meritorious arguments, for the PTAB faces the responsibility of writing a final written decision as to every claim. That responsibility, moreover, requires increasingly through explanations under Chenery. The possibility of full denial is even more stark given that the Guidance promises that, if the PTAB institutes at all, it will institute not only as to all claims but also as to all challenges raised in the petition.

Thus, petitioners have an incentive to focus their petitions even further—when choosing claims to challenge, grounds to assert, and prior art to cite—in order to ensure that the likelihood of full institution is greater than the likelihood of full denial.

Patent Office Incentives

The incentive of the Patent Office, meanwhile, is likely to deny institution relatively more often in the wake of SAS Institute, at least initially. One reason is that the Court’s opinion has no effect on the PTAB’s ability to grant full institutions. Panels could already do so and still can. What panels now confront is the prospect of fully instituting even where some arguments in the petition may lack merit. Rather than dispense with these potentially unavailing arguments at the institution phase, where estoppel would at least arguably not attach, the only alternative left is to try all of these arguments fully, with all the Chenery obligations that such a choice entails, and the specter of estoppel looming larger than before for the petitioner. This represents a potentially significant increase in the PTAB’s workload and is not something that the Patent Office is likely to undertake lightly.

Another reason why the agency’s incentives now point more, if not entirely, toward denial is the workaround proposed in Justice Ginsburg’s dissent. Only a paragraph in length, it expressly contemplates precisely this sort of full denial of a petition, except that the PTAB in its decision to deny institution would also identify which claims were worthy of review and which claims were not. Petitioners could then refile in light of this guidance. Justice Ginsburg described this exercise as the PTAB spending its time “uselessly”—in contrast simply to allowing partial institutions and reaching the same point without the added step of refiling.

But this is actually a reasonable idea. Just as petitioners themselves now have greater incentive than before to focus their challenges in order to make full institution more tenable than full denial, the PTAB can also play a useful complementary role by explaining in its denials of institution just what it finds worthy or unworthy of review, and why. By channeling petitioners to “file new or amended petitions shorn of challenges the Board finds unworthy,” the PTAB may create additional work in the short run. Over time, however, its guidance would conserve the agency’s adjudicatory resources by discouraging the overinclusive petitioning that partial institution fostered because the PTAB had a way to manage its workload without having to discipline extravagant petitioners.

This is no longer the case, and the PTAB’s own workload is now more closely tied to the burdens that it allows petitioners to visit upon patent owners. The opinion of the Court purported not to take a stance on policy arguments about efficiency, directing such arguments to Congress. Nevertheless, the decision in SAS Institute may produce efficiency gains after all.

48 thoughts on “First Steps After SAS Institute

  1. 6

    There seems to be a real problem with Justice Ginsberg’s “workaround” that a petitioner could file another petition based on the PTAB’s suggestions in a denial of the initial petition. It fails to account for the 35 usc 315(b) limitation that an IPR may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. Many petitions are filed at or very near the end of this one-year critical period. A second petition in most such cases would be denied as statutorily barred.

    1. 6.1

      Can you say non-Article III forum rule of no standing needed for a “beard” ( or some “properly” unrelated entity)…

  2. 5

    ” the PTAB can also play a useful complementary role by explaining in its denials of institution just what it finds worthy or unworthy of review, and why. ”

    I agree with that, it isn’t totally worthless time spent.

    1. 5.1

      Absolutely not worthless – see post 1.1 below. The Efficient Infringer crowd would love that feedback.

      Best part of the deal: the Executive Office has full discretion as to when (and for whom) they could do this “service” – you happen to be “supportive,” well, then, here’s a bonus for you. You happen to be on some (not public) list? well, no Soup for you.

  3. 4

    Re the suggestion here that: “But now, a full denial of institution is a real possibility even for petitions that may contain some meritorious arguments, for the PTAB faces the responsibility of writing a final written decision as to every claim.” [etc.]
    Since the statute only requires an IPR institution decision as to only one claim, this is a clear accusation that APJs will improperly, unethically, change or make IPR institution decisions simply to save more work on final decisions. Equivalent to broadly accusing PTO examiners of allowing invalid applications to save work, and APJs are attorneys. Furthermore, the obvious and ethical alternative is to simply hire more APJs for IPRs, which the PTO has already been doing.

    1. 4.1

      I agree 100%, Paul, and had the exact same reaction.

      The argument that the PTAB will just outright deny otherwise meritorious petitions to decrease workload, is a remarkably cynical view of PTAB judges. When someone takes a judicial position, whether it be in an administrative agency or court, they agree to decide the cases fairly and on their merits, without considering the judge’s own self-interest. It is a much higher burden that the ethical obligations imposed on practicing attorneys.

      Maybe I’m still an idealist, but I hope, for the sake of the patent system as a whole, that this cynical view doesn’t carry the day.

      And I don’t think they need to hire more APJs, either. The statute gives them a safety valve; the PTAB can choose, for good cause, to give themselves an extension of up to six months on the one year deadline to issue Final Written Decisions. The Board has rarely if ever used this procedure, but in appropriate circumstances, it may be warranted. If a particular petition raises a lot of challenges, the Board could simply extend its statutory deadline to give them more time to write the decision.

      Another alternative is to reform the current system in which there is a presiding APJ who basically does all of the work, writes the decision, etc. In many IPR proceedings, it actually feels like there’s just one judge, the others are just bystanders. Obviously for more complex petitions, a more equitable division of the workload could be devised so it doesn’t put so much on the presiding judge.

      1. 4.1.1

        When someone takes a judicial position, whether it be in an administrative agency or court, they agree to decide the cases fairly and on their merits, without considering the judge’s own self-interest.

        You clearly have not been paying attention to the documented stories exhibiting that NO such ethics requirement is in place for the Executive Branch administrative agency non-Article III judges that comprise the PTAB.

        This is NOT saying that ethics are being “violated” as much as saying that the ethics rules that you think to be in place are not so in place.

    2. 4.2

      To date they have not instituted based on merit. They have instituted on the same prior art considered in examination, drawn all inferences against the patenteee, and subjectively declared it “reasonably likely” that the claims are unpatentable. In short, they check their docket and institute the number of claims and grounds they can manage. 70% of petitions, 90% of patents. The standard for institution is “I’m a lot smarter than those guys over in examination, I’d better give this another look”.

      It is not an ethical issue. It is the lack of supervision and direction. Director Iancu simply needs to promulgate rules so that that PTAB actually does consider the merits of the petition. The institution rate should fall to 6% which is the defect rate according to the Office of Patent Quality Assurance.

      1. 4.2.1

        JM, 6% ?? As Iancu is well aware from his litigation defense work that is not even close to the % of patents held invalid in D.C. litigation, especially after Fed. Cir. appeals! I’m sure you are aware that the PTO OPQA has NO system at all for any prior art search check for examiner missed prior art, among other issues. Yet the vast majority of IPRs are based on expensive prior art searches to obtain and cite, with claim charts pointing to specific internal disclosures, material prior art patents or publications that are so frequently missed in the limited time available for application examinations. Not even to mention prior art not even available to examiners, such as prior published product service manuals.

        1. 4.2.1.1

          well aware from his litigation defense work that is not even close to the % of patents held invalid in D.C. litigation, especially after Fed. Cir. appeals!

          Maybe we should then – you know – fix the quality on the front end.

          Coming from the “real world” prior to law, I knew of NO organization that would dream of running a “quality” program based on how the USPTO has set up “quality” after the horse is out of the barn.

          Oh wait, I have only been suggesting this for like forever….

          (must be one of those substantive points that our friend Paul Morgan does not like to engage on)

          1. 4.2.1.1.1

            Actually, I HAVE repeatedly engaged on this subject, with hypocrites who strongly oppose any increase in the few hundred dollars the U.S. PTO charges for application prior art searches, yet expect to get prior art search quality levels like those one has to pay far more for at the EPO.

            1. 4.2.1.1.1.1

              with hypocrites who strongly oppose any increase in the few hundred dollars the U.S. PTO charges for application prior art searches

              This is the very first time that I have ever seen you put up that comment.

              Ever.

              Unless of course, you are referring to some general comment to ratchet up the price of patenting such that it be the Sport of Kings (and something that the US Sovereign expressly sought to have differently here)….

        2. 4.2.1.2

          I have looked at a substantial sampling of the IPR petitions. Most are similar to mine. Identical or cumulative prior art to what was considered in examination. You are simply repeating talking points that do not reflect the actual facts of the actual cases at the PTAB.

          Yes, 6%. How can any organization survive with a field defect rate that is higher than the outgoing defect rate?

          1. 4.2.1.2.1

            Josh, apparently a statistical study is needed, since my own limited IPR observation experience is exactly opposite to yours. That is, the IPR cited art was NOT the same art considered in the application examination or merely cumulative thereto.

            Dennis, this is important enough for one of your statistical studies – to look at the last 100 or so IPR decisions and the file of the subject patent. If Iancu is going to work on IPR quality, as we suspect, he needs to start from a factual basis.

            1. 4.2.1.2.1.1

              [M]y own limited IPR observation experience is exactly opposite to yours. That is, the IPR cited art was NOT the same art considered in the application examination or merely cumulative thereto.

              For whatever little my two-cents are worth here, my own experience jibes more with Paul’s.

          2. 4.2.1.2.2

            How can any organization survive with a field defect rate that is higher than the outgoing defect rate?

            It helps to have a statute that mandates your existence and a government monopoly in your industry that essentially guarantees a revenue stream (as well as generous public subsidy to your pension costs).

            1. 4.2.1.2.2.1

              The Statute does NOT mandate its existence.

              The US could full well choose not to have a patent system.

              (in fact, the cynical may have a point that such a choice has been in migration for some time now)

      2. 4.2.2

        The institution rate should fall to 6% which is the defect rate according to the Office of Patent Quality Assurance.

        To echo Paul here, I do not, however, see how TQAS’s soi disant defect rate is particularly relevant.

        I gather that district courts invalidate ~31% of challenged claims for lack of novelty, while the PTAB invalidates ~37% of challenged claims for lack of novelty. Those numbers are close enough that it might be that the difference is just statistical noise. I am not overly concerned that the PTAB is applying to wanton an approach to anticipation.

        Meanwhile, the district courts invalidate ~28% of claims for obviousness, while the PTAB invalidates ~57.6% of challenged claims for obviousness. The discrepancy here, I think, should concern us. Ideally, we do not want the challenger’s choice of venue (PTAB vs court) to be outcome determinative.

        What I do not know is the rate at which district court obviousness determinations are affirmed by the CAFC, compared to the rate at which PTAB determinations are affirmed. I suppose that if it turns out that many of those cases where the district court sustained the claims were subsequently over-turned on appeal, then maybe that would mean that the PTAB is getting it right where the district courts are getting it wrong. It is hard to know who is right without that critical piece of information. In any event, I think that there is prima facie cause to be alarmed that the PTAB is a bit wanton in its approach to obviousness.

        Still and all, the more comforting rate for obviousness invalidity from the PTAB would be something like ~30% (in the vicinity of the district court rate). A rate of 6% would indicate that the PTAB is operating with blinders on.

        1. 4.2.2.1

          How many of the patents are challenged in both district court and at the PTAB and how many receive a decision from both? If most are challenged in both venues and the PTAB invalidates 30%, and the district court invalidated another 40 or 60%, that’s a lot of worthless patents.

          1. 4.2.2.1.1

            Surprisingly, the majority of D.C. patent suits are still are not challenged in IPRs. [Of course many get quickly settled.] But of those that are, many D.C. cases are stayed for IPRs, IPRs are normally decided before normal D.C. trial dates, and extremely few get all the way to final decisions on validity on the same claims in both proceedings [contrary to the noise level on that subject in the few cases that do].

            1. 4.2.2.1.1.1

              Also of course once claims are cancelled in IPR decisions or any other completed post-grant proceeding those claim can no longer be sued on, and if not, estoppel applies, so IPR and D.C. suit invalidity statistics cannot be added together.

            2. 4.2.2.1.1.2

              Exactly, so roughly 30-60% get invalidated in IPRs and another 30% in the subsequent DC case, and there aren’t many claims left. Unless there is some evidence that claims that survive IPRs are less likely to be challenged or invalidated by the DC?

            1. 4.2.2.1.2.1

              Josh, thanks for that list, which is the first attempt at producing real numbers I have seen for IPR [BRI] claim invalidity decisions contrary to D.C. [In re Philips] claim invalidity decisions [including un-appealed decisions?]. But even if it is 158 FINAL decisions in CONTESTED validity proceedings in these proceedings over the 5 years that IPRs have been possible, that 13 a year is still a very small percentage of D.C. patent suits.

            2. 4.2.2.1.2.2

              That sounds like Monte Python floating witch reasoning. It is only “13 a year” because thousands of others are denied a fair hearing in a real court. We can only compare the 220 because all the others are stayed or dismissed. If this sample is representative then the PTAB is killing 76% of patents that were upheld in a real court.

              The other cases are stayed prior to any determinations, the PTAB kills the patent without due process including misconstruing the claims, and is upheld on appeal where an expert’s subjective opinion that combining certain prior art 20 years ago “would have been obvious” is credited as substantial evidence.

              Many of these 220 decisions (pulled from Docket Navigator) are indeed preliminary. That is the best we have. It is frustrating that the PTAB has killed all these patents without accountability or real review. They have been anointed as “experts”, deny patentee’s discovery or live testimony, misconstrue their claims, and apply subjective hindsight. Then apologists say well the patent was invalid all along so it doesn’t matter. It is invalid because they said it was invalid. She’s a witch because wood floats and she’s made of wood because she weighs the same as a duck.

              When the light is shined on these cases, they are mostly valid patents on legitimate inventions. Go ahead and scroll through the list.

              link to ipwatchdog.com

              1. 4.2.2.1.2.2.2

                Josh, you have a perfectly valid point that there may be large numbers of other IPR decisions that by now have precluded many D.C. jury trial decisions on patent invalidity [although interestingly some IPR opponents deny that.] especially those in which the D.C. case was stayed for the IPR.
                That is understandably hated by many patent owners, patent litigators, and private inventors. But, that is precisely what IPRs [and reexaminations before them] were intended to do by Congress to save hundreds of millions of dollars in patent litigation. The result is to get patent validity evaluated by patent attorney APJs rather than lay jurors with no technical or claim reading education, and on a different claim interpretation basis.

              2. 4.2.2.1.2.2.3

                When does the burden shift to PTAB defenders to rebut the evidence that they are killing valid parents? You keep repeating the purpose of AIA while specific cases and substantial evidence shows the shortcuts have changed the outcomes, making it not an alternative to district court.

                1. No one can seriously challenge the fact that there are a substantial number of patent claims found invalid by IPRs that a D.C. jury could have found “not proven invalid.” But that [nor subjective opinions] does not prove that the latter are ALL valid, especially comparing the very high affirmance rate of the Fed. Cir. of IPR decisions as compared to D.C. opinions.
                  But, this is now of little use to bemoan unless Congress can be convinced to throw out the whole system that it enacted by such a large and bi-partisan majority.

                2. When does the burden shift to PTAB defenders…?

                  What “burden”? An evidentiary burden is a procedural device in legal proceedings to decide who wins a tie. The existence vel non of IPRs is not a legal question, but rather a policy question. There is no “default” answer to this question, so there simply is no “burden” to “shift” one way or the other.

                3. That’s what I though. Ignore or dismiss the data that does not support the infringers’ narrative. When inventors complain that the policy is not just demand that we acquiesce to data driven policy. When we supply the data revert back to saying Congress can do whatever it wants and that’s the law.

                4. [S]ubstantial evidence shows the shortcuts have changed the outcomes, making it not an alternative to district court.

                  I am not convinced that anyone has shown as much yet, but there is good reason to worry that such might be true. The reforms up above would be a good idea to ensure that there is less motivation to forum shopping between court & PTAB.

                5. That sounds like Monte Python floating witch reasoning.

                  That’s because it is.

                  Did you really expect anything else from avowed cheerleaders?

    3. 4.3

      How long does it take to write a “final decision” on a claim that you’re not invalidating?

      “Herp we decline to invalidate claims 1-3, 4-10, 50-52 and this is our final written decision”.

      How hard is that? Is there some requirement that they give detailed justification for not invalidating a claim?

      1. 4.3.1

        FYI, the Fed. Cir. has made clear that “[f]or an appellate court to fulfill its role of judicial review, it must have a clear understanding of the grounds for the decision being reviewed” and indicated with respect to Board decisions that a “statute’s mandate to ‘review’ implies inherent power in this court to require that the Board’s decision be capable of review.” Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). The Fed. Cir. held “that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review.” Id. at 1460.

        1. 4.3.1.1

          Yes but they are in no position to have to explicitly answer all arguments against all claims. And even if they were just a generic “we are not persuaded that there is sufficient evidence to establish x fact, for y reason” or etc. is enough to address whatever arguments to whatever extent they wish to.

          Bottom line, their workload need not expand that much from this. Maybe a minute amount but I’ve seen plenty of board opinions that don’t take all day to say x.

    4. 4.4

      Since the statute only requires an IPR institution decision as to only one claim, this is a clear accusation that APJs will improperly, unethically, change or make IPR institution decisions simply to save more work on final decisions.

      Hm, I really cannot agree. Firstly, the PTAB has a statutory mandate, once they institute, to bring the case to a wrap within a year (extra 6 months in exception circumstances). It is entirely proper, therefore, for them to exercise their discretion not to take a case if it seems likely that they cannot do it justice in only a year. This is true even if there is a meritorious argument as to one claim in the challenge, and even if they might have found the argument against that single claim tractable in a year’s time frame (but intractable in view of the dozen other claims listed in the petition).

      There is nothing “unethical” about this exercise of PTAB discretion. The APJs need to be discerning in what they can and cannot do in a one-year time frame. It is entirely proper for them to say “these are too many claims to deal with in that one year” and to deny institution on that ground alone.

      Incidentally, merely hiring more APJs would not really deal with those sorts of situations. More claims under consideration will likely mean more art, which will mean more experts, which will mean more discovery. No matter how many APJs you have, if the discovery is the rate limiting step, you will not be able to do justice to the case within the statutorily mandated time limit.

      1. 4.4.1

        Greg, what statutory or Rule basis is there for an arbitrary and subjective APJ refusal to take a valid case on the sole basis that it would take too much work?* Especially with the limited discovery and page limits and time limits in IPRs? Do you really think the Fed. Cir. would approve of that, especially where, as usual, there is a copending D.C. suit against the Petitioner?

        *[Some application examiners would sure love to be able to do that.]

        1. 4.4.1.1

          § 314(a): “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition… 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” (emphases added).

          N.B. the phrasing “may not… unless…” is not “shall… if…” There is nothing mandatory about institution. It is presented as something entirely within the Director’s discretion to do, not a duty that he must perform.

          § 314(d): “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

          Nor is there any mechanism for someone whose petition is denied to challenge that denial. It does not matter if the PTAB admits on the record that they find a meritorious basis for challenge against at least one claim. If they deny institution, there is no recourse from that denial (except to file a new petition and hope that a different panel looks at it differently).

        2. 4.4.1.2

          Greg is right. Not only that, if the infringer is unhappy with the PTAB he still gets a trial by jury in a real court – a lot better deal than the has!

  4. 3

    Along similar lines, the Court also pointed out that “the language anticipates a regime where a reasonable prospect of success on a single claim justifies review of all”—justifies, not compels.

    EXCEPT for the fact that the holding IS compelling the opposite.

    Ooops.

    1. 3.1

      …to clarify, I am talking about those situations in which “justification has already been found.”

      Once found (but found partially), there is no option for “un-finding” just because the Court has clarified the law (that was always there… ;-) )

  5. 2

    ” Though the Guidance does not mention it, the PTAB could instead retroactively deny the entire petition (including what had previously been instituted). ”

    Does the PTAB have authority to retroactively deny a petition once instituted? 35 USC 318(a) requires “(a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d) ”

    The only mechanism for dismissal “under this chapter” that I could find have to do with a joint request by the petitioner and the patent owner.

    1. 2.1

      Appears that “dismissal” as provided by Congress is not a sua sponte OR only administrative agency decision (instead requiring both the patent holder and the challenger to make that decision).

  6. 1

    “Another reason why the agency’s incentives now point more, if not entirely, toward denial is the workaround proposed in Justice Ginsburg’s dissent.”

    This is EXACTLY the type of litigation GAMESMANSHIP that the majority decision specifically pointed out violate the intent of the law….and frankly warns all courts from engaging in. Given it was a Stanford-based IP forum panel (which of course includes Lemley), I shouldn’t be surprised by their promotion of this sort of violation and court gamesmanship….but I am. Infringement must be made to be as efficient as possible regardless of the costs to the patent system or the courts themselves…despite anything, including a specific and clear warning against this specific practice by the majority of the SCOTUS.

    1. 1.1

      Yup – “ throw as much C R P as you want, we will wade through it, let you know what we think may work, and let you have another bite – and that second bite will have the bonus of being ‘estoppel free’” – what Efficient Infringer wouldn’t love that type of sweetheart deal?

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