Unsurprisingly, in response to the recent SCOTUS decision, the PTAB has expanded the scope of the IPR on ChromaDex & Dartmouth's '086 patent to include all five claims. This sounds like a significant change, but it probably is not. You can read the order expanding the IPR here:
We did not pay much attention to the SCOTUS case challenging the constitutionality of Inter Partes Review, even though the demise of Inter Partes Review would significantly impact the litigation between Elysium and ChromaDex, because it seemed clear at the start that IPR was not going to be found unconstitutional, and that was even more obvious after oral argument last November.
However, in a little watched companion case, SAS v. Iancu, the SCOTUS ALSO struck down a regulation authorizing the PTAB to institute partial review -- that is, to review some, but not all, of the challenged claims.
That ruling affects the trial on Dartmouth's '086 patent, IPR 2017-01795, because the PTAB decided to review only claims 1, 3, 4, and 5, concluding that Elysium had no reasonable chance of success in invalidating Claim 2 (probably due to the PTAB's construction of the same claim term in the '807 Patent, which it declined to review).
But according to the SCOTUS, if PTAB decides to review even a single challenged claim, then it must review every challenged claim, even if all the other challenges are dubious, frivolous, or ridiculous.
This is, of course, a very stupid ruling, which is not a shocking thing to emerge from the pen of knave justice Neil Gorsuch. The smart justices (Ginsburg, Breyer, Kagan, Sotomayor) were all in dissent, and Justice Breyer made the point clear enough: It makes no sense that the Congress would want to waste the PTAB's "time and effort reviewing challenges that it has already decided have no 'reasonable likelihood of success.'”
The stupid thing about conservative text-obsessed judicial philosophy is that it incorrectly views the legislature as nearly omniscient, instead of nearly omnipotent. It ignores the realities that (1) legislators cannot anticipate every future scenario, and (2) statutory language is often born of a rushed, committee-like confusion.
The role of judicial review is to try to make sense of the inevitable problems that arise. These conservative judicial Textualists refuse to do their job of making sense of the law, and instead resort to literal interpretations that are often nonsensical, and make the work of government more expensive and more time consuming. That's what happened here.
As Justice Ginsberg pointed out, the PTAB has two choices going forward. It can either agree to review specious claims, or it can deny institution but tell the parties that a petition more narrowly tailored in specific ways would have a good chance of success. Ginsberg:
Given the Court’s wooden reading of 35 U. S. C. §318(a), and with “no mandate to institute [inter partes] review” at all...the Patent Trial and Appeal Board could simply deny a petition containing challenges having no “reasonable likelihood” of success, §314(a). Simultaneously, the Board might note that one or more specified claims warrant reexamination, while others challenged in the petition do not. Petitioners would then be free to file new or amended petitions shorn of challenges the Board finds unworthy of inter partes review. Why should the statute be read to preclude the Board’s more rational way to weed out insubstantial challenges? For the reasons stated by JUSTICE BREYER, the Court’s opinion offers no persuasive answer to that question, and no cause to believe Congress wanted the Board to spend its time so uselessly. (emphasis added)
With respect to Elysium's challenge already underway, I don't know whether the PTAB could have retroactively denied Elysium's petition and told it to re-file just claims 1 and 3-5, but the PTAB in fact chose to also review claim 2, even though the PTAB has tipped its hand that Elysium isn't likely to win on that one.
However, in the context of THIS litigation, in which it seems to me that Elysium's goal is to litigate as furiously as possible, even if success in the end isn't so likely, there is little doubt that Elysium will welcome a chance to make some additional arguments that have no reasonable chance of succeeding -- it won't be the first time -- and Steptoe will be forced to parry those blows on behalf of ChromaDex/Dartmouth. Neither Elysium nor ChromaDex will get much out of that in the end, but the lawyers continue to do very well.
Our blogging cup runneth over: We will now get to ALSO report on the parties' arguments regarding Elysium's doomed challenge to Claim 2. I'll tell you right now which way I think it's going to come out.