Does PTAB have complete discretion to deny institutions of Inter Partes Reviews

Supreme court agreed to hear about the another case of the America Invents Act: SAS institute’s vs. Lee. The inter partes review focuses on whether the AIA permits USPTO to partially institute IPR proceedings as it has been always doing. SAS argues instead that the statute requires a full up/down vote on a petition and, if granted, the Patent Trial and Appeal Board (PTAB) must then pass final judgment on all petitioned claims:
35 U.S. Code § 315 – Relation to other proceedings or actions;
a)INFRINGER’S CIVIL ACTION.
(1)INTER PARTES REVIEW BARRED BY CIVIL ACTION.
An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
(2)STAY OF CIVIL ACTION. If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either
(A)
the patent owner moves the court to lift the stay;
(B)
the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or
(C)
the petitioner or real party in interest moves the court to dismiss the civil action.
(3)TREATMENT OF COUNTERCLAIM.
A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.
(b)PATENT OWNER’S ACTION.
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
(c)JOINDER.
If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.
(d)MULTIPLE PROCEEDINGS.
Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.
(e)ESTOPPEL.
(1)PROCEEDINGS BEFORE THE OFFICE.
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(2)CIVIL ACTIONS AND OTHER PROCEEDINGS.
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

What previously was stated that the PTO cannot partially sponsor IPR proceedings since the statute requires that PTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”

Federal Circuits Decision

Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge NEWMAN.
STOLL, Circuit Judge.
SAS Institute, Inc. filed an inter partes review (“IPR”) petition with the Patent Trial and Appeal Board (“Board”) to review the patentability of ComplementSoft’s U.S. Patent No. 7,110,936. The Board instituted an IPR proceeding on some, but not all, of the ’936 patent claims challenged in SAS’s petition. The Board ultimately found all of the instituted claims, except for claim 4, unpatentable in view of the prior art. SAS argues on appeal that the Board misconstrued a claim term and that the Board erred by not addressing in the final written decision claims SAS petitioned against, but that the Board did not institute as part of the proceeding. ComplementSoft cross-appeals two of the Board’s claim constructions. For the reasons below, we agree with the Board on all of the challenged constructions and determine that the Board did not need to address in its final written decision claims it did not institute. We also vacate the Board’s determination that claim 4 is patentable and remand so that the parties may address a new construction that the Board adopted in its final written decision after interpreting the claim differently before.

SAS Opposition

OPINIONS BELOW
The opinion of the court of appeals (Pet. App. la-40a) is reported at 825 F.3d 1341. The order of the court of appeals denying rehearing (Pet. App. 87a-102a) is reported at 842 F.3d 1223. The opinion of the Patent Trial and Appeal Board on institution of inter partes review (Pet. App. 103a-128a) is not published but is available at 2013 WL 8595939. The final written decision of the Patent Trial and Appeal Board (Pet. App. 41a-86a) is not published but is available at 2014 WL 3885937.

JURISDICTION

The judgment of the court of appeals was entered on June 10, 2016. A petition for rehearing was denied on November 7, 2016 (Pet. App. 87a-102a). The petition for a writ of certiorari was filed on January 31, 2017. The jurisdiction of this Court is invoked under 28 U.S.C. 1254(1).

“As a result the court may shift filing to the new startegy.”