Deeper, UAB v. Vexilar, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petition under 35 U.S.C. § 314(a) shows a reasonable likelihood of prevailing on only a small part of what it challenges (here two of twenty-three claims on one of four grounds), the Board may, in its discretion and on the particular facts, deny institution of the entire petition because trying all claims and grounds on evidence directed to so few would not be an efficient use of the Board's time and resources. This follows from § 316(b) efficiency considerations and the June 5, 2018 SAS Q&As guidance. No prior precedent directly addressed this issue; the decision applies the Office's June 5, 2018 SAS Q&As guidance (Part D) and follows Chevron Oronite Co. v. Infineum USA L.P., Case IPR2018-00923, slip op. at 10–11 (PTAB Nov. 7, 2018) (Paper 9). For petitioners, a broad petition with many claims and grounds can be denied in full if most of it is supported by conclusory expert testimony, even though some claims clear the reasonable likelihood bar. For patent owners, a preliminary response that shows weakness across most claims and grounds can support denying the whole petition rather than only trimming it. The Board relied on SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018), and Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016), for the point that institution stays discretionary even when the standard is met, and on In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016), on conclusory showings. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 314(a), review may not be instituted unless the petition and response show a reasonable likelihood that the petitioner would prevail on at least 1 challenged claim. Even then institution is discretionary. The Board is guided by 35 U.S.C. § 316(b) (efficient administration of the Office and timely completion) and 37 C.F.R. § 42.1(b). Per the SAS Q&As, the Board may consider the number of claims and grounds meeting the reasonable likelihood standard in deciding whether to deny the entire petition. No numerical threshold is stated. TRIGGERING FACTS: Petitioner challenged twenty-three claims under four grounds, with each claim the subject of two separate grounds. It showed a reasonable likelihood only for claims 22 and 23 on Jang and Fairbairn. The other showings failed mainly because the petition and expert testimony were conclusory, on the temperature processing circuit limitation and on the Langer/Kabel WIFI hotspot combination. The Board stressed that its ruling rested on the particular facts of the proceeding. KEY QUOTE: "On this record, and based on the particular facts of this proceeding, instituting a trial with respect to all twenty-three claims and on all four grounds based on evidence and arguments directed to only two claims and one ground would not be an efficient use of the Board's time and resources." (Paper 7, p. 43) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited, with "See, e.g.,", Chevron Oronite Co. v. Infineum USA L.P., Case IPR2018-00923, slip op. at 10–11 (PTAB Nov. 7, 2018) (Paper 9), and relied on the SAS Q&As, Part D (June 5, 2018). PRACTICE TIP: Do not file a sprawling petition with weak, expert-conclusory grounds hoping a few claims will get review. Support every claim and ground with specific evidence and reasoning, because failure on most of them risks denial of the whole petition. Patent owners should use the preliminary response to show how few claims and grounds meet the standard and argue for full denial under § 314(a).