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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.
The PTAB rejected Patent Owner's argument as contrary to
SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
Id. at 3-4. The PTAB explained:
The Supreme Court determined that "Section 314(a) does not
require the Director to evaluate every claim individually. Instead,
it simply requires a decision whether the petitioner is likely to
succeed on 'at least 1' claim." 138 S. Ct. at 1356.
The Court explained: "[o]nce that single claim threshold is
satisfied, it doesn't matter whether the petitioner is likely
to prevail on any additional claims; the Director need not
even consider any other claim before instituting review."
Id. (emphasis original). Further, the Court emphasized:
"Rather than contemplate claim-by-claim institution . . . the
language [of section 314(a)] anticipates a regime where a
reasonable prospect of success on a single claim justifies review
of all." Id.
Accordingly, the Supreme Court's interpretation of the law
in SAS controls the institution decision.
Id. at 3. Patent Owner failed to provide "any
persuasive justification for why we should interpret our Rules to
require an evaluation and analysis of every claim and every ground
notwithstanding the Supreme Court's instructions to the
contrary." Id. at 3-4.
The PTAB also noted that, in any event, it believed its
institution decision addressed all claims and all grounds.
Id. at 4. Claims 1-8 are all independent claims, and
Patent Owner acknowledged that the claims have many common
elements. Id. The PTAB stated that Patent Owner directed
its preliminary response arguments to these "common
elements." Id. With the exception of one claim,
Patent Owner made no distinction between the challenged claims in
its arguments. Id. at 4-5. The PTAB explained that its
analysis in the institution decision "is equally applicable to
each of the other challenged claims because Patent Owner argued the
claims as a group" and that Patent Owner failed to
"identify any specific argument presented by Patent Owner that
is not addressed." Id. at 5.
Thus, in the PTAB's view, its institution decision need only
address one claim and one ground pursuant to SAS, but its
decision in this particular case actually addressed all claims and
all grounds, contrary to Patent Owner's position.
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