USPTO Issues Guidance Applying SAS Institute to Pending and Future PTAB Trials

On April 26, 2018, the United States Patent and Trademark Office (USPTO) issued a guidance, applying SAS Institute v. Iancu to the America Invents Act (AIA) trial proceedings. The U.S. Supreme Court in SAS Institute held that when the Patent Trial and Appeal Board (PTAB) institutes an inter partes review, it must decide the patentability of all claims challenged in the original petition. The USPTO guidance gives a general outline of how the PTAB will review patents in the future, and how it will handle cases that are already pending.

The memo makes clear that the PTAB will no longer have partial institutions: “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” For pending trials in which the PTAB has instituted trial on only some of the petitioned claims, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.” The final written decision will address, to the extent claims are still pending at the time of decision, “all patent claims challenged by the petitioner and all new claims added through the amendment process.” When supplementing the institution decision, the panel has discretion to manage the trial proceeding. The panel may permit “additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.” Cases near the end of the 12-month statutory deadline may be extended, on a case-by-case basis, if required to afford all parties a full and fair opportunity to be heard.

“Upon receipt of an order supplementing the institution decision, the Petitioner and Patent Owner shall meet and confer to discuss the need for additional briefing and/or any other adjustments to the schedule.” Any dispute that cannot be resolved among the parties may be raised in a conference call with the Board. The parties may agree to affirmatively waive additional briefing or schedule changes.

Although the memo provides a general overview of how the Board will apply SAS Institute to future and pending cases, the specifics are still unclear. PTAB Chief Judge David Ruschke in a recent discussion with Vice Chief Judges Scott Weidenfeller and William Fink provided some specifics at a USPTO webinar held on April 30. Judge Ruschke clarified that SAS Institute requires the PTAB to address every challenged patent claim only if it agrees to review a patent. And, if review is granted, the PTAB will address all grounds raised in the petition. Given the initial discretion to institute an IPR, the PTAB may deny review retroactively. The PTAB may terminate proceedings retroactively in those cases where the Board instituted partial review, but determine in light of SAS Institute, that it is not worth the agency and parties resources to continue with a much broader proceeding. The PTAB has taken a flexible approach to implementing SAS Institute, one adhering to the holding of the case, while affording PTAB judges discretion in managing the trial proceedings.

Gibbons will continue to monitor the impact of the SAS decision, including any legislative action, and provide periodic updates when applicable.

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