Waiving the SAS Right to Trial on All Challenged Claims

Although non-precedential, Valmont Indus. v. Lindsay Corp (Fed. Cir. 2018) appears to be the first post-SAS Federal Circuit opinion involving a partially-initiated inter partes review (IPR) proceeding.

In its IPR petition, Lindsay challenged all 18 claims of Valmont’s U.S. Patent No. 7,003,357.  The PTAB instituted, but only to claims 1-15 and 17-18 — the case against Claim 16 was not strong enough.   In its final decision, the PTAB found the claims obvious except for claim 11 and, of course claim 16 (whose validity was not tried).

Meanwhile, in SAS, the Supreme Court ruled that the PTO cannot partially-institute its AIA trials, but rather, it must either hold trial on all the challenged claims or none of the challenged claims.

[The statute] directs that “[i]f an inter partes review is instituted and not dismissed under this chapter, the [Board] shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” §318(a) (emphasis added). This directive is both mandatory and comprehensive. The word “shall” generally imposes a nondiscretionary duty. . . . SAS is entitled to a final written decision addressing all of the claims it has challenged.

One open question following SAS is what-to-do with all the cases that have been partially instituted . . . Here, neither party filed any post-SAS briefing and the court consequently ignored the issue — holding that the PTAB erred on claim 11 and instead that all of the tried claims should be cancelled.

Because the decision here is non-precedential and sub silento, it is difficult to discern much meaning — but one conclusion is that the right to trial and written decision on all challenged claims is a waivable right. In SAS, the court referred particularly to the right as an “entitlement” held by the petitioner — and most entitlements are waivable.  The setup raises several questions – most notably (1) does the patentee also hold the entitlement and (2) may the petitioner “waive” the all-challenged-claims right within the petition itself?

As an alternative theory — I dug into some of the documents and found that the aformentioned unjudged Claim 16 was later challenged in an ex parte reexamination and Valmont calncelled the claim in that proceeding. At that point, it is probably appropriate to say that it is no longer a “claim” subject to challenge.

9 thoughts on “Waiving the SAS Right to Trial on All Challenged Claims

  1. 2

    Another interesting aspect of this case is the Fed. Cir. reversal decision on claim 11 (adding GUI “shape”) in response to the Petitioner’s CROSS-appeal. That claim was NOT held unpatentable in the IPR decision below, but was by the Fed. Cir. [Based on the patents spec and admissions during the IPR.] This is not the first time the Fed. Cir. has reversed IPR claim validity decisions. It must be an unpleasant surprise to patent owners figuring that a claim that had survived the IPR “death squad” must surely be safe in their appeal to the Fed. Cir. attempting to reverse the IPR rejections of other claims.

    1. 2.1

      Not sure why you would think this to be such an unpleasant surprise, as all one has to do is remember that the CAFC has been browbeaten by the Supremes and is no longer a court entity looking to protect innovation.

      1. 2.1.1

        the CAFC has been browbeaten by the Supremes and is no longer a court entity looking to protect innovation.


        Try to believe it, folks.



          The statement is readily believed by those who understand innovation.

          You, on the other hand, continue to suffer from your severe cognitive dissonance in regards to the work product that you (supposedly) produce.

          (perhaps find a career creating something in which you do not have a fundamental philosophical issue with)

  2. 1

    I like your alternate theory better than your main one.

    Waiving something is typically only recognized when what one is doing is recognized as a choice of doing (or not doing ) that something. Sub silento is too questionable to apply waiver. The claim not existing (and thus the issue not existing so as to not be mentioned) is actually the more clear, cleaner view.

    1. 1.1


      This is not clear or clean.

      Here the entitlement and the choice are not under the law and prior to institution, but after incorrect institution… with no clear mandate for proper treatment of a case already instituted against only a subset of claims in the petition… in view of what choices remain now, the entitlement arises perchance as a consequence of there being a something which should have been done which was not done.

      This raises the double entitlement question, HAD the law been followed EITHER all claims in the petition would be dealt with or NONE. there would have been no choice to partially institute. The main problem is that the entitlement seems to flow from the actual decision to institute in comparison to the decision which WOULD have been made if the board knew it could not partially institute.

      IF the decision would have been to institute on ALL claims, then the petitioner has, in the present limbo state, an entitlement to all claims being dealt with, BUT

      IF the decision would have been NOT to institute, then the entitlement, in the present limbo state, is for NONE of the claims to be dealt with.

      Messy indeed.

      1. 1.1.1

        Clarification: IF the decision would have been NOT to institute, then the entitlement OF THE PATENTEE, in the present limbo state, is for NONE of the claims to be dealt with.


          And IF the decision had been NOT to institute, then the Appeals court would have had no jurisdiction to hear the appeal (35 U.S.C. §314(d)). No appeal at all is about as un-messy as it comes.

      2. 1.1.2

        I suppose that in some alternate universe it would be messy. As Prof. Crouch pointed out, however, in this universe the non-instituted claim (#16) has already been cancelled in a parallel proceeding. As such, the appeals court cannot give the petitioner the relief it was seeking (cancellation of Claim 16). The issue, in other words, is moot. The appeals court lacks jurisdiction even to address it at this point.

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