USPTO Guidance for Dealing with SAS Decision

Patent

by Dennis Crouch

The US Supreme Court recently decided SAS Institute Inc. v. Iancu (U.S. Apr. 24, 2018), holding that USPTO has been improperly issuing “partial-institution” and holding AIA trials on only a subset of challenged claims. The USPTO has now issued a one-page introductory guidance memorandum for procedure moving forward.  According to the Memo:

  1. The PTAB will institute as to all claims or none. Thus going forward, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”
  2. For pending trials associated with a partial-institution decision, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. . . . [and] may take further action to manage the trial proceeding” to take into account the shift. “For example, if the panel has instituted a trial and the case is near the end of the time allotted for filing the Patent Owner Response, the panel may extend the due date for the Patent Owner Response to enable the Patent Owner to address any additional challenges added to the proceeding.”
  3. “It is expected that the parties will work cooperatively … to resolve disputes and propose reasonable modifications to the schedule.”
  4. Questions: Trials@uspto.gov or “Chat with the Chief” webinar on Monday, April 30, 2018, from noon to 1 pm ET to discuss the SAS decision.

The guidance here makes sense except to the extent that the guidance does not appear to require ongoing panels to add the additional challenged claims.  The memo states that “the panel may issue [such] an order,” it should instead require each panel to issue such an order.

Second issue. Although I expect it was a collaborative effort with PTO management, the guidance here comes from the PTAB.  That answer matters because the Patent Act particularly divides duties between the Director (institution decisions) and the PTAB (AIA Trials). Although the Director has delegated his institution decision role to the PTAB, I don’t know that the Director has delegated authority to later expand the institution decision.

[Read the Guidance][Link to the upcoming Chat with the Chief]