Under SAS, the PTO must Institute as to All Separate Challenge Grounds Against All Claims

Back in 2016, Adidas petitioned the USPTO Director to institute inter partes review (IPR) proceedings against two of Nike’s patents. U.S. Patent Nos. 7,814,598 and 8,266,749. Acting on behalf of the Director, the PTAB instituted review of all challenged claims. The caveat – Although Adidas had raised two different grounds for challenging the claims, the USPTO instituted only on ground 1.

Here, the invention basically has three steps: (1) knitting fabric in a cylindrical form and then (2) cutting out a shoe-upper pattern from the fabric; and (3) incorporating the cut-out into a shoe. Grounds 1 and 2 were obviousness challenges with overlapping prior art citations: Ground 1 (Reed and Nishida) and Ground 2 (Castello, Fujiwara, and Nishida). In its final determination – focused just on Ground 1 – the PTAB sided with the patentee Nike and held that Adidas had not met its burden of proving obviousness.

On appeal, Adidas argued that the case should be remanded under SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Although SAS focused on institution of all challenged claims – Adidas argues here that the case stands for the proposition that an IPR petition may only be granted/denied as a whole – if is granted, it must be granted as a whole, including all grounds for challenging all claims. Further, Adidas argues for remand because the PTAB has changed its own rules and now institutes review on all challenges raised in a petition. See Guidance on the Impact of SAS on AIA Trial Proceedings (Apr. 26, 2018).

The Federal Circuit has now sided with Adidas – ordering remand to consider all grounds raised by the petition as required by SAS. [Read the Decision: AdidasNike]

The appellate court writes:

The [Supreme] Court explained in SAS that in establishing inter partes review, Congress set forth “a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” The Court held that if the Director institutes review proceedings, the review must proceed “in accordance with or in conformance to the petition,” a “petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based,'” (quoting 35 U.S.C. § 312(a)(3)). “Nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.” The [Supreme] Court found that “the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation,” and “that the petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion.”

Nike argued that Adidas had also waived its right to present the alternative grounds by failing to raise the issue before the Board. On appeal, the Federal Circuit found “waiver inapplicable” in this case because the request on appeal was filed as “a prompt remand request due to the significant change in the law.”

= = = =

Looking back at the institution decision and reasons for denial on Ground 2, the PTAB explained that the petition “fail[ed] to identify ‘with particularity’ the grounds and evidence that form the underlying basis for Petitioner’s patentability challenge. For instance, with respect to claim 1, the claim chart offered to point out where the features of the claim are present in the prior art spans four pages and constitutes bulk citation to portions of Castello, Fujiwara, and Nishida. See Pet. 34–37. Such an approach does not provide meaningful “particularity” sufficient for the panel to ascertain where, specifically, Petitioner identifies the limitations of the claim in the prior art.”

17 thoughts on “Under SAS, the PTO must Institute as to All Separate Challenge Grounds Against All Claims

  1. 4

    Remember the hub-bub (not so long ago) about the PTAB “stacked panels” (be they explicit or implicit), off-the-record “collusions” (in order for the Office to “enforce” its desired policies), and other such complaints that reflect that the USPTO has one of the worst separations between judicial and political forces of any administrative agency?

    The phrase I note below should resonate and shine like a spotlight on such shadow ventures (did you SAWS what I did there? )

  2. 3

    S.M I don’t see the relevance of your first paragraph to this question,* but as to Board “New Grounds of Rejection”, Have you seen any for a new prior art reference [versus subsituting 103 for 102 or 112 or the like] even in ex parte appeals. 37 CFR 41.5o “New Grounds of Rejection” specifically says: “The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims.”
    *As I recall the Board member’s name change to APJ was quite a long time ago, and by the Director [but is now in 35 USC 6, etc.] At that time the Interference Board Chief APJ said that the only change in the job, hiring, salary or benefits was that he thought he got better luck in making restaurant telephone resevations as “judge.”

    1. 3.1

      What was that quip from the Supreme Court about executive branch and “judges” there?

    2. 3.2

      New grounds of rejection (NGR) has changed over time. At one time you might see an Examiner-in-Chief (EIC) searching through the paper shoes back in a group (now, “Technology Center”). More often, though, adding a new reference would occur when an EIC had another, perhaps related, case that had a killer reference that could not be ignored.

      NGR is currently out of favor because the Chief-before-last, in order to raise production, nullified the notice-and-comment rulemaking for NGR and decreed that NGR can be entered only when the panel is unanimous. That was also when credit for dissents and concurrences was taken away, effectively raising production quotas. With the ex parte backlog disappearing, I wouldn’t be surprised if NGR comes back in full. That would help avoid detailing APJs to other parts of the Office, which has occurred when cases are scarce.

      When the Board of Interferences and the Board of Appeals merged in 1982, the denizens took the statutory title of the Board of Appeal’s EICs. I kinda liked the sound of “Examiner-in-Chief,” although it was sometimes misunderstood as including a supervisory role over examiners. Commissioner (later Director) Lehman in the early 90s decided that examiners should not try to interpret law and wanted the Board to serve that role. He sent a memo to the Board indicating they could refer to themselves by the more modern title of “Administrative Patent Judge.” (As you likely know, Administrative Law Judges were once called Hearing Officers). The statutory change in title from EIC to APJ did not occur until March 2000.

      A Board decision containing NGR is a Board decision, though not a final decision. The appellant has the option of submitting an amendment and/or new evidence and continuing prosecution before the examiner, or requesting rehearing by the Board. If a rehearing is denied, the decision becomes final and appealable, without returning to the examiner’s jurisdiction.

      1. 3.2.1

        Thank you S. Morse for putting more meat, and dates, on the old bones of my old memory. [You must not be a spring chicken yourself.]
        Yes, if the applicant does not want the benefit of any active prosecution response to a new ground of rejection, and is willing to rely solely on mere attorney argumention in an unlikely rehearing the applicant can do so.

        1. 3.2.1.1

          Bones… meat… skin… ALL go to what I first posted.

          Thank you, thank you very much.

    3. 3.3

      At that time the Interference Board Chief APJ said that the only change in the job, hiring, salary or benefits was that he thought he got better luck in making restaurant telephone resevations as “judge.”

      “Don’t you know who I am?” <—–LOLOLOLOLOLOLOL

      Washington DC is filled with the worst people.

      1. 3.3.1

        “Washington DC is filled with the worst people.”

        Maybe that’s why the Patent Office left DC in the 1960’s.

  3. 2

    Given that the phrase “The [Supreme] Court explained in SAS that in establishing inter partes review, Congress set forth “a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” The Court held that if the Director institutes review proceedings, the review must proceed “in accordance with or in conformance to the petition,” a “petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based,’” (quoting 35 U.S.C. § 312(a)(3)). “Nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.” The [Supreme] Court found that “the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation,” and “that the petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion.”” is used, it is worth linking:

    link to patentlyo.com

    Many “old-timers” of the PTAB may need to disabuse themselves from thinking that they are “super-examiners.”

    1. 2.1

      They never did think that. Years ago I was a part of a friendly informal dinner conversation with practitioners and ‘old timer’ Board members in connection with an AIPLA meeting. That subject came up, and they enjoyed telling me a story about one new APJ who noticed that the examiner below had completely missed the boat, so in a few minutes the APJ pulled up a much better prior art reference to cite. That APJ obviously got in trouble for doing that, which was why they all remembered it. APJs take a very strict view of the word “Appeal” in “Board of Appeal.” If an examiner fails to find and cite relevant art the Board is not going to fix that even if it is obvious to them that there was a deffective prior art search. Those patents get allowed and of course are then highly vulnerable to reexaminations or IPRs.

      1. 2.1.1

        I have heard and personally witnessed the opposite, Paul.

      2. 2.1.2

        No doubt. But what decade were the ol timers talking about? Were they appointed by the President, the Undersecretary, or the Sec. Of Commerce? Were they examiners in chief or apj’s? EICs by statute? APJS by Internal memo? APJS by statute? Btw, APJs are not “old timers.” EICs, some are, that survive.

        New Grounds of rejection fall in and out of fashion, but will re-appear when the ex parte appeal backlog goes away. Meaning, soon.

      3. 2.1.3

        The thing you got to remember, the present Board members have examining functions delegated from the Director In Ex Parte Appeals. Have been for many years. What other Judges can enter ‘new grounds of rejection?’ Even Pauline said the business of the PTO is issuing patents that are valid.

      4. 2.1.4

        Plus, Board new grounds of rejection are only possible in ex parte appeals and are required to be labeled as such and are not Board decisions they are remands back to examiners.

  4. 1

    The last paragraph above in this blog emphasises that good well targeted “claim charts” are a vital skill for inter partes post grant petitioners.

    1. 1.1

      Or as former SAPJ McKelvey put it more bluntly [a good lesson for Dennis’ law students], citing an article III case: “Courts are not required to engage in a truffle hunt through a partys briefs.”

      1. 1.1.1

        “Judges are not like pigs, hunting for truffles buried in briefs.” United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). A per curiam opinion, but sounds like Richard Posner.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture