Since the U.S. Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu, the USPTO’s Patent Trial and Appeal Board institutes inter partes review on all or none of the challenged grounds and claims. To comply with this standard, the Board has on occasion instituted review encompassing patent claims for which the petitioner did not establish a reasonable likelihood of demonstrating unpatentability. Yet, after a full IPR trial, the Board has sometimes held those claims unpatentable.

In these scenarios, the board has typically explained that it changed course after reconsidering petitioner’s arguments under a more complete record. For example, in Instrumentation Lab. Co. v. HemoSonics LLC, the board found at institution that petitioner had failed to demonstrate where the cited anticipatory reference disclosed the claimed use of coagulation activators as reagents. IPR2017-00855, Paper 14, at 22 (PTAB Sept. 1, 2017).

The board explained that while the art disclosed activators of coagulation, it never explicitly identified their use as reagents. The board therefore found no reasonable likelihood that petitioner would prevail on its anticipation ground.

During trial, however, petitioner re-emphasized portions of its petition establishing the missing teachings and submitted additional exhibits containing critical admissions by patent owner and its declarant relating to the asserted prior art. Id., Paper 55, at 14–15 (PTAB Feb. 13, 2019). Based on the full trial record, the board reversed course and found that a skilled artisan would have understood that the disclosed coagulation activators were used as reagents, even though the prior art did not explicitly identify them as reagents. In view of this finding, the board held the challenged claims anticipated on the previously deficient ground.

Board Reversed Course

The board also reversed course after examining the full trial record and changing the claim construction of a key term in Samsung Elecs. Co. Ltd. v. ProMOS Techs. Inc., IPR2017-01413, Paper 33 (PTAB Oct. 22, 2018).

At institution, the board construed “maintaining the phase difference between the input clock signal and the feedback clock signal” in patent owner’s favor to mean “ensuring that the feedback clock signal follows behind the input clock signal,” adding a directional requirement based on the specification and prosecution history. Id., Paper 7, at 12 (PTAB Oct. 25, 2017) (emphasis added).

Based on this preliminary construction, the board found no reasonable likelihood that petitioner would prevail in establishing unpatentability of the claims reciting the construed term. During trial, however, petitioner responded by distinguishing the portions of the specification and prosecution history relied upon by patent owner and citing additional Federal Circuit precedent concerning claim construction. Id., Paper 33, at 15–18. On the full record, the board concluded that the specification and prosecution history did not contain any “clear disavowal” of claim scope, requiring that the board “must not rewrite the claims.” Id., Paper 33, at 15–16. Applying a revised claim construction, the board subsequently held the challenged claims unpatentable. Id., Paper No. 33, at 22, 36–37.

Approaches to Address Deficiencies

Considering the board’s willingness to reconsider its original positions, IPR practitioners should embrace the old expression that “there is no such thing as lost cause.” Petitioners during trial can and should take various approaches to try to address deficiencies identified by the board in an institution decision, such as incomplete prior art teachings, insufficient motivation rationale, or an incorrect claim construction.

Petitioners may be able to direct or re-orient the board to portions of the petition, supporting expert declarations, admissions from patent owner and its declarants, or to additional case law to address the board’s initial concerns about the adequacy of a particular proposed ground of unpatentability. Petitioners should not, however, count on the ability to later buttress grounds failing to meet the “reasonable likelihood” standard by asserting many grounds in the hope that one will resonate with the board and lead to institution.

The all-or-nothing standard for institution under SAS has created a double-edged sword, enabling patent owners to ask the board to exercise its discretion to decline to institute all of petitioner’s grounds, even if some of those grounds may be reasonably likely to prevail. 35 U.S.C. § 314(a); Biofrontera Inc. v. DUSA Pharm. Inc., IPR2018-01585, Paper 10, at 14 (PTAB Feb. 26, 2019) (“[The board is] permitted, but never required, to institute inter partes review when a petitioner meets the threshold for institution.”).

In Biofrontera, for example, the board exercised its discretion not to institute an IPR when the petitioner established a reasonable likelihood on only one of eight grounds, which accounted for only three of the 16 challenged claims. The board explained that “the benefits of holding a trial to resolve the challenges having a reasonable likelihood would be overwhelmed by the burden of addressing the challenges having no reasonable likelihood.”

Finally, IPR practitioners should monitor the dozens of institution and final written decisions issued by the board each month. Undoubtedly, as the board continues to refine its post-SAS practices, new decisions will help IPR practitioners more precisely navigate these proceedings.