This year, the Supreme Court held that once the PTO grants review of a petition for IPR, it is “statutorily required to address every claim.” SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018). In other words, the PTO cannot institute partial review of a patent.

Judge Dyk dissented in part on other grounds.2Id., 25 F.4th at 991.3Id., 25 F. 4th at 989 (quoting Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300, 817 F.3d 1293, 118 USPQ2d 1316, 1321 (Fed. Cir. 2016) (emphasis added)).4SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 200 L.Ed.2d 695 (2018).5Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 990, 2022 USPQ2d 130, 2022 WL 333669 (Fed. Cir. 2022) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1357-58, 200 L.Ed.2d 695 (2018)).6Id., 25 F.4th at 990-91.7Id., 25 F.4th at 991.8Id., 25 F.4th at 991.

Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020) Panel: Chief Judge Prost and Circuit Judges Plager and O'Malley Opinion by Chief Judge Prost; additional views by Chief Judge Prost and Circuit Judges Plager and O'Malley[i]See 315 U.S.C. § 315(b).[ii] The IPR institution decisions were made prior to the Supreme Court’s resolution of SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).[iii] As discussed below, Facebook also argued that the Federal Circuit should defer under Chevron to the USPTO’s interpretation of the statute, which would only be appropriate if the statute were ambiguous.

In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged. The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests a regime where “a reasonable prospect of success on a single claim justifies review of them all.”

the first-filed petition was not evaluated on the merits] (sua sponte Director review decision)New Informative PTAB Decisions There are no new informative PTAB decisions.New Requests for POP ReviewDaiichi Sankyo, Inc. et al v. Seagen Inc. f/k/a Seattle Genetics, Inc. (PGR2021-00030) [Requesting POP review of De-Institution Decision on the basis that “[b]y discounting its finding of ‘strong merits’ solely based on a parallel jury verdict, the panel impermissibly abdicated its fact‐finding duty, instead deferring to a district court jury on whether review is warranted, and violated the very guidance on which it purported to rely”]Sun Pharmaceutical Industries Limited v. Aurinia Pharmaceuticals Inc. (IPR2022-00617) [Requesting POP review of Institution Decision, presenting the question of whether institution based on arguments developed by the Board for threshold questions of patentability not raised in the petition is ultra vires and contravenes the requirements of 35 U.S.C. § 314(a), SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), and In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) that the petition itself must establish a reasonable likelihood that the petitioner would prevail]Freedom to Operate, Inc. v. COMPASS Pathways Limited (PGR2022-00012 and -00018) [Requesting POP review of Institution Decision “in order to confirm that a post-grant proceeding should be instituted where a Petitioner provides expert testimony from highly qualified experts who provide detailed reasoning and scientific basis to support their opinions that, if not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”]Liquidia Technologies, Inc. v. United Therapeutics Corporation (IPR2021-00406) [Requesting POP review of Institution Decision, presenting the following question: if a person of ordinary skill in the art must rely on a “research aid” to find a reference, does the date of public accessibility of that reference depend on the date on

The Court noted that this case “requires us to consider the application of 35 U.S.C. § 315(e)(2) under a rather unusual set of facts.” Specifically, before the Supreme Court overruled the practice of partial IPR institutions in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the PTAB had instituted Ingenio’s IPR petition on only some of the grounds in the petition. Then, after the Supreme Court’s decision in SAS, Ingenio did not seek remand for institution on the non-instituted grounds “when given the opportunity to do so.”

For most of the past decade, the Supreme Court has been marking out the metes and bounds of the Patent Trial and Appeal Board's execution of the post-grant review provisions of the Leahy-Smith America Invents Act, particularly with regard to inter partes reviews (see "Oil States Energy Services, LLC. v. Greene's Energy Group, LLC (2018)"; "Return Mail, Inc. v. U.S. Postal Service (2019)"; "SAS Institute Inc. v. Iancu (2018)"; "Cuozzo Speed Technologies, LLC v. Lee (2016)"; and "Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. (2015)"). In its most recent decision, Thryv, Inc. v. Click-to-Call Technologies, LP (2020), the Court ruled that 35 U.S.C. § 315(b), which precludes a petitioner from filing aninter partes review petition more than one year after being served with a complaint alleging infringement, are barred from judicial review under 35 U.S.C. § 314(d).

That case concerned whether time bar decisions by the PTAB were reviewable by the Federal Circuit. The appeal here concerns the parallel district court litigation that concerned the same patents, and actually involves the effect of a different Supreme Court case - SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).In the IPR proceedings, the PTAB initiated review of several claims, but denied the petition with respect to one ground: Freeman, which was raised as prior art to claim 27. During the pendency of the appeal of the IPR, and while the district court action was stayed, the Supreme Court overruled the practice of partial institutions of IPRs in SAS. Ingenio, however, never sought remand under SAS for the Board to consider Ingenio’s challenge to claim 27.Following the conclusion of the IPR proceedings, the district court revived the litigation.

The Federal Circuit also rejected Ingenio’s argument that IPR estoppel could not apply because claim 27 was not part of the Board’s final written decision. Due to the unusual facts of this case, Claim 27 was included in Ingenio’s petition but the Board failed to include claim 27 in its final written decision due to a legal error of partial institution, which was later corrected in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). The IPR proceeding was still pending when SAS issued and Ingenio could have sought remand to address claim 27, but chose not to. “Ingenio’s choice to leave unremedied the Board’s mistake does not shield it from estoppel as to a claim it included in its IPR petition.

Soon thereafter, the Supreme Court held that the PTAB must include all claims challenged in any trial. Id. (citing SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1354–60 (2018)). The Petitioner was then granted an extension to file a Request for Rehearing to incorporate SAS related issues, and was ultimately granted a rehearing to address the previously non-instituted grounds.