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:
- 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.”
- 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.”
- “It is expected that the parties will work cooperatively … to resolve disputes and propose reasonable modifications to the schedule.”
- 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]
The Memo is deliberately vague on whether the PTAB is obligated to add non-instituted claims into the IPR proceeding. There is a very specific reason for this.
The PTO is leaving open the possibility that, for pending IPRs in which less than all challenged claims were instituted, petitioners may choose NOT to have the non-instituted claims added to the pending AIA trial.
The reason is simple. For example, suppose you’re a petitioner in an ongoing IPR, and the PTAB said at the institution phase, “instituted on claims x, y, and z, but you’re unlikely to prevail on a, b, c, so no institution on those claims.”
Under the new SaS case, of course, the Petitioner now has the right to get claims a, b, and c added to the IPR proceeding, and to get a Final Written Decision issued on its challenges to those claims.
BUT does the Petitioner really want that?!
The Board has already gone against the Petitioner on those claims at the institution decision. Does the Petitioner REALLY want to give the Board the opportunity to confirm those claims in a Final Decision, which is subject to statutory IPR estoppel under the AIA? I suspect, for most petitioners, the answer will be “no.”
Of course, there are poor PTAB decisions written by inexperienced judges, and in those cases, petitioners may think the institution reasoning was weak and wouldn’t stand up on appeal. But for the majority of pending IPR petitions, I expect petitioners to treat the non-institution decision as the PTAB having done them a solid, as having avoided IPR estoppel on the weaker claims they would likely have lost in the AIA trial.
Also, I do not read the SaS decision as precluding IPR petitioners from waiving their right to have all claims addressed in their petition addressed in a Final Written Decision after institution. (The Petitioner could, for example, just choose to withdraw certain claims from its petition.) My suspicion is that, in order to take advantage of the dynamic, the PTAB will put the onus on the Petitioners to decide whether or not they want to seek to have non-instituted claims added to pending proceedings. If they choose not to, the case will proceed just on the originally-instituted claims. This gives the PTAB an option that may prevent a dramatic increase of workload on pending AIA proceedings.
One major problem with your thesis:
The petitioner has already chosen the claims upon which they wanted challenged.
No second bite based on some “ambiguity” from the administrative agency.
This is NOT about any “right” for ANY petitioner to now choose again or choose differently.
Although I do think that you alight upon a definite angle here:
The estoppel angle.
The “right” way out – the equitable way out – is that since we all know that the Court does not write law (and only interprets law – wink wink), that the estoppel must have been there all along.
Besides, under what possible view would a second bite decision align with the still-there-just-now-properly-interpreted law?
IPR estoppel is statutory:
35 USC 315
“The petitioner in an inter partes review of A CLAIM IN a patent under this chapter that results in a FINAL WRITTEN DECISION under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that THE CLAIM is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review..” [Emphasis provided]
You do realize that this SUPPORTS my position, right?
Thanks for additionally supporting my comment at 1. * But do you have any observations or statistics on how many partial IPR institution decisions give such very specific reasons for not conducting an IPR trial on all petitioned claims?
How is it relevant at all to the declared law as to ANY rationales for partial institution?
Pick a rationale – any rationale.
Pick one more positive to a patent holder.
Pick one more positive to a challenger.
Then explain how ANY rationale on partial institution intersects and CHANGES the law as the 5-4 Court has put forth.
I don’t see you doing so.
One, you typically do not engage on the merits.
Two, on this issue, there is NO meritous position that provides flexibility that is being sought.
Re: “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.”
As previously noted, depending on what may have been resolved or settled re the co-pending D.C. litigation on that patent, the petitioner may no longer care whether it gets a decision on those originally petitioned claims which the PTAB dis not put into the IPR trial. Would it not be a waste of time and money for everyone, and unnecessary delay, to now put those claims into the IPR trial if the petitioner waives doing so?
It would have been far more helpful if your “previous note” also carried along the “previously noted replies to your previous note.”
That is, if you were actuallly interested in anything other than your own cheerleading efforts…
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