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One Is the Loneliest Number to Institute . . . Two Is Just as Odd as One, but Under SAS It’s Simply All or None

Addressing whether the review of a single claim on a single challenged ground in a petition may be sufficient to institute inter partes review (IPR) for all challenged claims on all challenged grounds, the Patent Trial and Appeal Board (PTAB) held that SAS Institute’s baseline “one claim” requirement is also a threshold past which no further review of the petition’s substantive arguments is necessary. Alcatel-Lucent USA Inc. v. Oyster Optics, LLCCase No. IPR2018-0070 (PTAB Aug. 31, 2018) (Kenny, ALJ).

Alcatel-Lucent filed a petition for IPR against a patent owned by Oyster Optics. In May 2018, the PTAB instituted review for all claims on all grounds, even though the PTAB’s evaluation of whether petitioner showed a reasonable likelihood of success was limited to a single ground of unpatentability for a single claim. Oyster filed a request for rehearing, arguing that the PTAB erred as a matter of law by failing to assess the merits of each claim and ground of unpatentability in the petition. 

The PTAB denied Oyster’s request for rehearing, basing its holding on the logical implications of the Supreme Court of the United States’ opinion in SAS Institute (IP Update, Vol. 21, No. 5). The PTAB noted that Oyster failed to explain how SAS necessitates review of every claim, and pointed to contrary evidence from SAS where the Supreme Court interpreted § 314(a) of the America Invents Act to only guarantee meritorious assessment of all claims and all grounds in the final written decision. The administrative patent judge (APJ) here ruled that § 314(a) also authorizes the director to institute on all claims and on all grounds after a showing that “one claim” satisfies the threshold requirement for institution, quoting the Supreme Court’s stated intention of creating a regime where a reasonable prospect of success on a single claim justifies review of all claims. The APJ rejected Oyster’s alternative argument that excluding the meritorious analysis of all but one challenged claim and ground in the institution decision would disrupt the streamlining of trial as (1) underestimating the amount of overlap between the issues between the evaluated claim and the remaining claims, and (2) dismissing the well-defined grounds presented in the petition and the preliminary response, both of which will be clarified through discovery and trial briefing. Accordingly, the APJ upheld the PTAB’s post-SAS practice of reviewing only as much of the petition as is necessary to find a single claim that permits institution.

Practice Note: While providing no substantive changes to IPR practice, this decision removes from both parties the opportunity to receive a substantial amount of useful information from the PTAB regarding the merits of all grounds asserted in the petition.

© 2019 McDermott Will & Emery

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About this Author

Paul Devinsky, Intellectual Property Attorney
Partner

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.

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