The America Invents Act's creation of patent challenge
proceedings to be conducted by the USPTO's Patent Trial
and Appeals Board (PTAB) provided a powerful tool for challenging
patent validity outside of costly litigation proceedings. But
recent events are changing the strategic advantage that such
proceedings may hold for patent challengers.
Almost one year ago, the Supreme Court issued its decision in
SAS Institute Inc. v. Iancu,
holding that the PTAB must – if it decides to institute an
inter partes review (IPR) proceeding – decide the
patentability of all of the claims the petitioner has challenged.
As implemented by the USPTO, "if the PTAB institutes a trial,
the PTAB will institute on all challenges raised in the
petition." See Guidance. This all-or-nothing
approach has resulted in denial of petitions for which only a few
of the challenged claims are likely to be found invalid. See,
e.g., Biofrontera Inc. v. DUSA Pharms., Inc.,
IPR2018-01585, Paper 10
