The Patent Trial and Appeal Board (PTAB)’s decision to institute an IPR is 
discretionary.[1] In SAS Institute, Inc. v. Iancu,[2] the Supreme Court held that the PTAB’s duty to decide the patentability of all of the claims the petitioner has challenged, however, is nondiscretionary. That is, all grounds must be either instituted or denied. Nevertheless, with its discretion, the PTAB can still deny institution due to other issues, even if a reasonable likelihood of unpatentability exists.
Weaker Grounds Can Undermine Institution
One issue is whether or not institution would serve the just, speedy, and inexpensive resolution of the parties’ dispute. In Biofrontera Inc. v. DUSA Pharms., Inc.,[3] the petitioner challenged 19 claims with 2 anticipation grounds and 6 obviousness grounds. Although the PTAB found 1 ground met the “reasonable likelihood of showing unpatentability” threshold with respect to 3 claims, the PTAB nevertheless denied institution because the benefits of holding a trial “would be overwhelmed by the burden of addressing the challenges having no reasonable likelihood.” The PTAB then exercised its discretion not to institute “because institution would not serve the just, speedy, and inexpensive resolution of the parties’ dispute, or of inter partes reviews as a whole.”
“Catch-All” Grounds Can Fail to Meet Particularity Requirement
Another issue is whether or not institution would meet the particularity requirement of 35 U.S.C. § 312(a)(3). In Adaptics Ltd. v. Perfect Co.,[4] the petitioner challenged 9 independent claims on 4 grounds based on 12 references. In its decision denying institution, the PTAB determined that one of the petitioner’s grounds was a “catch-all” ground. In asserting obviousness, the petitioner used “and/or” to combine references. “Petitioner’s use of ‘and/or,’” the PTAB explained, “expands the ground to include combinations of three, four, or more references, yielding hundreds of possible combinations …”[5] Consequently, the PTAB determined that the petition failed to meet the particularity requirement of 35 U.S.C. § 312(a)(3). According to the PTAB, this failure to meet the particularity requirement resulted in “voluminous and excessive grounds.”[6]
Practice Pointer
Those seeking to file petitions for inter partes review should weigh the strengths and weaknesses of grounds and determine whether strong grounds in a petition would pull weaker grounds along, or whether weaker grounds would undermine institution. Potential petitioners should also pay attention to particularity so as to avoid a “catch-all” ground resulting in “voluminous and excessive grounds.”
[1] 35 U.S.C. §314(a).
[2] 138 S.Ct. 1348 (2018).
[3] IPR2018-01585, Paper 10 (P.T.A.B. Feb. 26, 2019).
[4] IPR2018-01596, Paper 20 (P.T.A.B. Mar. 6, 2019).
[5] Id. (emphasis added).
[6] Id.
