PTAB Can Reach Final Written Decision On Challenges Unlikely To Succeed

In SAS Institute v. Iancu, the Supreme Court held that when the PTAB institutes inter partes review under 35 U.S.C. § 314, it must decide the patentability of all claims the petitioner has challenged. SAS Institute left open the question of how the PTAB should handle the binary application of 35 U.S.C. § 314, especially for grounds that it finds lack a reasonable likelihood of success at institution. According to a recent PTAB decision, the Board held that is able to reach a final written decision on all claims, even those it criticizes or questions in the institution decision.

The PTAB addressed two IPRs, one requested by Cisco Systems and Oclaro, and another by Nokia, both challenging claims in a patent owned by Oyster Optics. Prior to SAS Institute, the Board partially instituted IPR, excluding from review those claims and grounds that it found lacked a reasonable likelihood of success. In response to SAS Institute, the Board modified its institution decision to