[co-author: Kyle Perisutti]*
The PTAB recently exercised its discretion under 35 U.S.C. § 314 to deny institution of inter partes review for inefficient use of the PTAB’s time and resources notwithstanding that the petitioner met the threshold for institution as to one challenged claim. Salem Fabrication Techs. Grp., Inc., v. Uniglass Eng’g Oy, No. IPR2022-01517, Paper 9 at 25 (P.T.A.B. Mar. 22, 2023)(“Decision”). The PTAB’s Decision highlights that under 35 U.S.C. § 314(a), whereby the PTAB may not institute an IPR “unless . . . there is a reasonable likelihood that a petitioner will prevail with respect to at least 1 of the claims challenged,” institution remains discretionary even where a petitioner is reasonably likely to prevail on one challenged claim. Id. at 23–24 (citing SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) and Harmonica Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)).
Salem Fabrication Technologies Group, Inc. (“Petitioner”) petitioned for IPR of Uniglass Engineering Oy’s patent relating to a glass tempering furnace, challenging all fifteen of the patent’s claims multiple times as obvious under 35 U.S.C. § 103. Id. at 2–3, 6. Petitioner asserted seven grounds of invalidity, alleging that every claim was obvious over at least three grounds, for a total of forty-six challenges to the claims. Id. at 6.
The PTAB found that six grounds suffered from hindsight bias because Petitioner did not establish motivation for a person of ordinary skill in the art to combine or modify the prior art. Id. at 14. The PTAB noted that a petitioner must “explain[] . . . how or why the references would be combined to produce the claimed invention” and that Petitioner provided “no reason whatsoever.” Id. (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)). Simply asserting that references are from the same field as the claimed invention or that they would have been considered by the POSITA is insufficient to show motivation. Id. at 15–16.
The PTAB found that Petitioner’s arguments and evidence of obviousness met the threshold for institution solely as to the seventh ground. Id. at 21–23. But, the PTAB declined institution because “instituting review would require reviewing all challenged claims under all grounds even though . . . Petitioner could at best succeed on 1 of 46 challenges . . . [and so doing] would not be an efficient use of the Board’s time and resources.” Id. at 25. “[T]he sufficiency of Petitioner’s challenge to one out of fifteen claims based on one out of four [challenges to that single claim] is not enough to warrant institution.” Id. at 23.
The PTAB cited its duties under 35 U.S.C. § 316(b) “to timely complete proceedings,” and 37 C.F.R. § 42.1(b) to “secure the just, speedy, and inexpensive resolution of every proceeding” in exercising its discretion. Id. at 24. The PTAB noted office guidance, issued on June 5, 2018, explaining that it may consider the number of claims and grounds that meet the institution threshold when deciding whether to institute under 35 U.S.C. § 314(a). Id.
Takeaway. The PTAB may consider the number of challenges reasonably likely to fail that would require review compared to those reasonably likely to succeed when determining whether instituting review is an efficient use of the PTAB’s resources. A petitioner should consider the strength and number of its challenges to claims in requesting IPR so as not to make review appear inefficient use of the PTAB’s time.
*Summer Associate
