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IP Alert
IP Alert: PTAB Denies Institution of IPR Despite Finding Reasonable Likelihood of Prevailing

November 16, 2018

On November 7, in Chevron Oronite Company LLC v. Infineum USA L.P., the Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) despite finding that the petitioner had demonstrated a reasonable likelihood of prevailing on some claims. The PTAB concluded that instituting a trial with respect to all claims when there is only a reasonable likelihood of prevailing on a subset of claims was “not an efficient use of the Board’s time and resources.”

In SAS v. Iancu, the Supreme Court held that when an inter partes review is instituted, the PTAB must decide the patentability of all of the claims challenged by the petitioner. The Chevron decision illustrates one PTAB panel’s reaction to SAS.

Chevron filed an IPR petition challenging on obviousness grounds all 20 claims of Infineum’s U.S. Patent No. 6,723,685. The PTAB found that Chevron had demonstrated a reasonable likelihood of prevailing with respect to only two dependent claims. The panel found that Chevron’s argument relied on a claim construction that the panel did not agree with generally. However, the two dependent claims could reasonably be read as limited to the claim construction relied upon by Chevron. Consequently, the PTAB found Chevron to have a reasonable likelihood of prevailing on only the two dependent claims.

Despite finding that Chevron had met the requisite standard for institution for these two claims, the PTAB denied institution nonetheless. The PTAB explained that the USPTO is never compelled to institute an IPR proceeding and that the institution decision is always a matter within its discretion. Referring to post-SAS guidance from the USPTO, the PTAB concluded that it would not be an efficient use of its resources to institute a trial for all challenged 20 claims when there was only a reasonable likelihood of prevailing with respect to two of those claims.

This decision is noteworthy as a case in which the all-or-nothing post-SAS standard might have a led to a different outcome in an institution decision than under the previous understanding of the rules, where the PTAB could institute an IPR on only some of the challenged claims. It remains to be seen whether the PTAB will expand its use of discretionary denials.

For more information on this ruling, please contact Fitch Even partner Karen J. Wang.

—Fitch Even law clerk Zachary Van Engen contributed to this alert.

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