PTAB: Institution Decision Addressing Only One Claim Acceptable Post-SAS

Last week, the PTAB denied a rehearing request by a patent owner who asserted that the PTAB's institution decision failed to comply with PTAB rules, specifically 37 C.F.R. § 42.108, because the institution decision only addressed one claim. See Seoul Semiconductor Co., Ltd. v. Document Security Systems, Inc., IPR2018-00265, Paper 24 (PTAB Oct. 1, 2018) (slip op.).

The petition in this IPR challenged claims 1-9 of the patent on four grounds. Id. at 4. In its rehearing request, Patent Owner argued that the PTAB violated 37 C.F.R. § 42.108 because it evaluated only one claim on two grounds in the institution decision, and, according to Patent Owner, § 42.108 requires the Board "to include in every decision to institute an evaluation and analysis of every claim and every ground." Id. at 2.