While there is no doubt that Judge Newman may be motivated by a decent concern (power and audacity of an Administrative State), she is yet again asleep.

To wit (emphasis added):

“In SAS Institute the Supreme Court held that 35 U.S.C. § 318(a) requires that in an inter partes review the PTAB must decide all of the claims and grounds challenged in the petition. Id. at 1354–58. Since the PTAB had not met this requirement for these cases, our Remand Order instructed:

The Court held that IF the Director institutes review proceedings, the PTAB review must proceed “in accordance with or in conformance to the petition,” including “ ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’ ” – BioDelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 1207 (Fed. Cir. 2018) (“Remand Order”) (quoting SAS Institute, 138 S. Ct. at 1355–56).”

She misses that the Supreme Court holding is NOT a directive of

“you must institute on all grounds,” – bar any other factor (like the factor as to whether to institute at all — which is given WIDE latitude by Congress to the PTAB),

but rather a directive of

“IF you institute, then you must institute on all grounds.”

There is a clear difference, and the PTAB (here at least) simply did not do as Judge Newman thinks that they did.

Now, I will note that there is dicta (read that as overreach) from the Supreme Court in the SAS case that may indicate that what the CAFC wanted with the remand was something different than what the PTAB (properly) did.

This dicta can be found with: “Section 314(a)’s requirement that the Director find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests, if anything, a regime where a reasonable prospect of success on a single claim justifies review of them all.”

Let’s all recognize that this is a policy decision being ‘read into’ some supposed intent of Congress. However, this is negated by how Congress actually set up the power of PTAB. So while there is indeed ‘truth’ to the Supreme Court’s holding of the decision to institute being a binary decision, the Supreme Court wanders into the weeds and seems to take away the discretion of the PTAB as to whether to institute or not. As the Court itself in this very case stated (with the actor modified): “if Congress had wanted to adopt the [Supreme Court’s] approach, it knew how to do so.” IF Congress wanted the PTAB to mandatorily institute if but one claim would be considered as having the specified chance of succeeding, Congress knew how to write such a mandatory condition.

The late Ned Heller once supplied a learned reference that discussed the danger of taking Supreme Court dicta and treating that dicta as holding.

This is an instance that reinforces that view.