C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart B—Inter Partes Review

37 C.F.R. § 42.108

Institution of inter partes review

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(a) When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.

(b) At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.

(c) Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause.

[85 FR 79129, Dec. 9, 2020]
Notes of Decisions
Cited in 30 cases (6 in the last 5 years), 2014–2026 · leading case: Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.
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Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. (2016) cafc · cites it 20× “at *20 (citing 37 C.F.R. § 42.108 ). There were no substantive determinations of the Payne- based ground in the Board decision.”
Synopsys, Inc. v. Mentor Graphics Corporation (2016) cafc · cites it 8× “” 37 C.F.R. § 42.108 (a). At the second stage, the Board conducts the inter partes review and then issues a final decision with respect to “any patent claim challenged by the petitioner.”
SAS Institute Inc. v. Iancu (2018) scotus · cites it 3× “Relying on a Patent Office regulation recognizing a pow- er of “partial institution,” 37 CFR §42.108 (a), the Director instituted review on some of the claims and denied review on the rest.”
Harmonic, Inc. v. Avid Technology, Inc. (2016) cafc · cites it 4× “25, 2013) (citing 37 C.F.R. § 42.108 (a)). Harmonic argues that in light of the Board’s conclusion in its final written decision that Haskell and Ross-mere do not render claim 11 unpatentable, the Board was compelled to revisit the grounds it previously deemed redundant.”
Sas Institute, Inc. v. Complementsoft, LLC. (2016) cafc · cites it 4× “at 1316 (validating 37 C.F.R. § 42.108 , which “authorize[s] the review to proceed on all or some of the challenged claims”).”
Aqua Products, Inc. v. Matal (2017) cafc · cites it 2× “37 C.F.R. § 42.108 (a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”
Credit Acceptance Corp. v. Westlake Services (2017) cafc · cites it 2× “…regulations as well since the PGR provisions contain identical language. Compare 35 U.S.C. §§ 314 (a), 315(e)(1), and 37 C.F.R. § 42.108 , with 35 U.S.C. §§ 324 (a), 325(e)(1), and 37 C.F.R. § 42.208 . The IPR statutes and PGR statutes (as adopted into the CBM framework) were…”
Oil States Energy Services, LLC v. Greene's Energy Group, LLC (2018) scotus “See 37 CFR §42.108 (c) (2017). 4 OIL STATES ENERGY SERVICES, LLC v.”
Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. (2018) cafc · cites it 2× “, IPR2017-00572, Paper 32 (PTAB July 13, 2017) (citing 37 C.F.R. §§ 42.108 (c), 120(a)). This reinforces the view that IPR is an act by the agency in reconsidering its own grant of a public franchise.”
Synopsys, Inc. v. Lee (2016) cafc · cites it 2× “(“Synopsys”) brought a suit in district court under the Administrative Procedure Act (“APA”) seeking to invalidate the Patent and Trademark Office’s (“PTO”) regulation that allows the Patent Trial and Appeal Board (“the Board”) to institute inter partes review on “all or some of…”
Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC (2018) cafc “And for several of the other patents, the Board did not institute review of each ground asserted in the petition.”
Nobel Biocare Services Ag v. Instradent USA, Inc. (2018) cafc “at *6-7, 27 ; see 37 C.F.R. § 42.108 (a) ; 37 C.F.R. § 42.107 (e) ("The patent owner may file a statutory disclaimer under 35 U.”
Show all 30 citing cases →
— 37 C.F.R. § 42.108(a) — 3 cases
Synopsys, Inc. v. Mentor Graphics Corporation (2016) cafc “” 37 C.F.R. § 42.108 (a). At the second stage, the Board conducts the inter partes review and then issues a final decision with respect to “any patent claim challenged by the petitioner.”
Sas Institute, Inc. v. Complementsoft, LLC. (2016) cafc “at 1316 (validating 37 C.F.R. § 42.108 , which “authorize[s] the review to proceed on all or some of the challenged claims”).”
Sas Institute, Inc. v. Complementsoft, LLC. (2016) cafc
— 37 C.F.R. § 42.108(b) — 1 case
Sas Institute, Inc. v. Complementsoft, LLC. (2016) cafc
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