In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged.  The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests a regime where “a reasonable prospect of success on a single claim justifies review of them all.”  Id.  The  policy argument that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others was said to be a question for Congress, “not this Court.”  Id. at 1352.

Shortly after SAS was decided, the Board set out guidance on April 26, 2018, that stated it “will institute as to all claims or none,” and further stated that if a trial is instituted, it “will institute on all challenges raised in the petition.”  Commentators immediately questioned how the Board would manage its caseload and meet the statutorily mandated requirement to issue a final determination not later than one year after the date of a decision to institute review.  See 35 U.S.C. §316(a)(11).

In Chevron Oronite Co. LLC v. Infineum Usal.P., IPR2018-00923, Paper 9 (Nov. 7, 2018), the Board denied institution despite finding that the petitioner demonstrated a reasonable likelihood of prevailing with respect to two dependent claims (Paper 9 at 10).  The Board cited SAS to state that “[e]ven when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, however, institution of review remains discretionary.  SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018).”  Id.  The Board also cited its guidance, issued on June 5, 2018, explaining that it “may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).”  Id. at 10-11.  The Board ultimately concluded that “instituting a trial with respect to all twenty claims based on evidence and arguments directed to dependent claims 3 and 4 is not an efficient use of the Board’s time and resources,” and it did not institute the review.

This is a reminder of the discretion the Board may exercise to control its docket and of the need for petitioners to be strategic and careful in their challenges, especially those containing multiple claims and/or grounds.  Patent owners should continue to emphasize deficiencies in any preliminary responses, especially where such deficiencies may dominate a majority of the claims and/or grounds.