To ensure that the doorway to IPRs was not limitless, Congress de-lineated a specific threshold before a trial could be instituted. That threshold is set forth in 35 U.S.C. § 314(a), which provides that IPR may not be instituted unless the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, the Board has increas-ingly identified circumstances in which it will not institute IPR, even where a petitioner satisfies this statutory threshold. Indeed, the Board has seemingly adopted the view that it has essentially unfettered dis-cretion to deny institution, separate and apart from the “reasonable likelihood” standard. As explained below, neither the text of Section 314(a) nor the legislative history of the AIA appears to support the Board’s view; moreover, this interpretation may be hindering Congress’ intent to provide an effective administrative alternative to litigation on the issue of patent validity.
Joel D. Sayres & Reid E. Dodge,
Unfettered Discretion: A Closer Look at the Board's Discretion to Deny Institution,
Chi. -Kent J. Intell. Prop.
Available at: https://scholarship.kentlaw.iit.edu/ckjip/vol19/iss4/5