Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based on prior art that was raised or could have been raised. See 37 CFR § 42.24 and 35 U.S.C. § 315(e). The advice to pursue only a limited number of well-developed grounds is even more crucial in view of the PTAB’s guidance on the impact of the Supreme Court’s recent decision in SAS Institute Inc. v. Matal, 16-969 (Apr. 24, 2018).

The recent guidance states that pre-institution, “the PTAB will institute as to all claims or none.” In relation to follow-on petitions, the PTAB has found that the Director has broad discretion under 35 U.S.C. § 314(a) to not institute inter partes review. General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (Precedential) (Paper 19 at 15). A determination under §325(d) whether “the same or substantially the same prior art or arguments” has been presented “is not intended to be the sole factor in the exercise of discretion under § 314(a)” Id. at 19. In deciding whether to institute follow-on petitions, the PTAB follows the NVIDIA factors including:

  • the finite resources of the Board; and
  • the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

Id at 9-10.

These concerns apply to all AIA proceedings. If every one of a large number of grounds in a petition must be instituted, the PTAB will face a significantly increased burden if it institutes a proceeding on a petition with a large number of grounds. And the NVIDIA factors recognize the tension that exists between the limited resources of the PTAB and the need to complete the proceeding within one year. Taken together, this suggests that petitions with a large number of grounds are less likely to be instituted post-SAS.