We affirm. We first conclude that, although SAS Institute, Inc. v. Iancu , ––– U.S. ––––, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018), now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, we have jurisdiction to address the merits of the Board's final written decisions and that we need not, and will not, sua sponte revive the "non-instituted" claims and grounds. We then conclude that the Board committed no error justifying disturbance of its obviousness decisions on their merits.
That goal—preventing appeals that would frustrate efficient resolution of patentability—extends beyond § 314(a) appeals. Click-to-Call also contends that we adopted its interpretation of § 314(d) in SAS Institute Inc. v. Iancu , 584 U.S. ––––, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018). Neither of our holdings in that case assists Click-to-Call, and both holdings remain governing law.
As the Supreme Court has explained, "the petitioner's petition . . . is supposed to guide the life of the litigation [in an IPR proceeding]." SAS Inst., Inc. v. Iancu, — U.S. —, 138 S. Ct. 1348, 1356, 200 L.Ed.2d 695 (2018). By creating the IPR procedure, "Congress chose to structure a process in which it's the petitioner . . . who gets to define the contours of the proceeding."
Ironburg sued Valve in the Northern District of Georgia on December 3, 2015. Valve then filed a petition with the United States Patent and Trademark Office ("PTO"), which partially instituted an IPR on September 27, 2016, as was permitted prior to the Supreme Court's decision in SAS Institute Inc. v. Iancu, — U.S. —, 138 S. Ct. 1348, 200 L.Ed.2d 695 (2018). The Patent Trial and Appeal Board ("PTAB" or "Board") instituted the IPR on three grounds, but declined to institute on two other grounds (the "Non-Instituted Grounds").
Vicor argues that inter partes reexamination cannot satisfy factor two because it is an "examinational" or "inquisitorial" proceeding. Appellee's Br. 23 (quoting Abbott Labs. v. Cordis Corp. , 710 F.3d 1318, 1326 (Fed. Cir. 2013) and SAS Inst., Inc. v. Iancu , ––– U.S. ––––, 138 S. Ct. 1348, 200 L.Ed.2d 695 (2018) ). Vicor argues that, accordingly, "the examiner—not the third-party requester—is the person who frames the challenge and drives the inter partes reexamination proceeding," inhibiting Vicor's ability to present evidence and argument and rebut SynQor's evidence and argument.
As to the obviousness of claim 6, FanDuel's reply argued exclusively that the Board should maintain its institution decision view that the Slot Payouts Webpage is prior art. After FanDuel filed its reply, the Board modified its institution decision to comply with SAS Inst., Inc. v. Iancu , ––– U.S. ––––, 138 S. Ct. 1348, 200 L.Ed.2d 695 (2018). The parties filed supplemental papers on the initially non-instituted grounds, one of which challenged claim 6 as obvious over the Slot Payouts Webpage in combination with two different references.
Guerrero-Lasprilla v. Barr , ––– U.S. ––––, 140 S. Ct. 1062, 1069, 206 L.Ed.2d 271 (2020) (quoting Kucana v. Holder , 558 U.S. 233, 251, 130 S.Ct. 827, 175 L.Ed.2d 694 (2010) ); see id. ("Consider first" the presumption in favor of judicial review.); SAS Inst., Inc. v. Iancu , ––– U.S. ––––, 138 S. Ct. 1348, 1359, 200 L.Ed.2d 695 (2018) ("[W]e begin with ‘the strong presumption in favor of judicial review.") (quoting Cuozzo Speed Techs., LLC v. Lee , ––– U.S. ––––, 136 S. Ct. 2131, 2140, 195 L.Ed.2d 423 (2016) ). That presumption means that, "when a statutory provision ‘is reasonably susceptible to divergent interpretation, we adopt the reading that accords with traditional understandings and basic principles: that executive determinations generally are subject to judicial review.’ "
Unless and until Congress amends the FDPA, DOJ is bound to "follow its commands as written, not to supplant those commands with others it may prefer." SAS Inst., Inc. v. Iancu , ––– U.S. ––––, 138 S. Ct. 1348, 1355, 200 L.Ed.2d 695 (2018). We have no license to read into the FDPA a limitation on "manner" that has no basis in the text and to read out of the statute its incorporation of state law.
The Board instituted review of all of the challenged claims and grounds in the petitions, except for claims 60 and 61 of the '552 patent. The Board's institution decisions were issued prior to the Supreme Court's decision in SAS Institute, Inc. v. Iancu , ––– U.S. ––––, 138 S. Ct. 1348, 200 L.Ed.2d 695 (2018), which held that the Director cannot institute on fewer than all of the claims challenged in the petition. In this case, no party seeks SAS -based relief. "[A]lthough [SAS ] now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, we have jurisdiction to address the merits of the Board's final written decisions and ... we need not, and will not, sua sponte revive the ‘non-instituted’ claims and grounds."
II. Remand The parties agree that Alere is entitled to remand under SAS Institute, Inc. v. Iancu, — U.S. —, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018) in order for the Board to consider the non-instituted claims and grounds in the petition. The parties dispute whether we should first reach the merits of the unpatentability challenges for the instituted claims and grounds.