Likelihood of Success on 1 of 46 Claims Deemed In

Likelihood of Success on 1 of 46 Claims Deemed Inefficient, PTAB Litigation Blog

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The PTAB recently exercised its discretion under 35 U.S.C. § 314 to deny institution of inter partes review for inefficient use of the PTAB’s time and resources notwithstanding that the petitioner met the threshold for institution as to one challenged claim.  Salem Fabrication Techs. Grp., Inc., v. Uniglass Eng’g Oy, No. IPR2022-01517, Paper 9 at 25 (P.T.A.B. Mar. 22, 2023)(“Decision”).  The PTAB’s Decision highlights that under 35 U.S.C. § 314(a), whereby the PTAB may not institute an IPR “unless . . . there is a reasonable likelihood that a petitioner will prevail with respect to at least 1 of the claims challenged,” institution remains discretionary even where a petitioner is reasonably likely to prevail on one challenged claim.  Id. at 23–24 (citing SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) and Harmonica Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)).

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