29 Jun 2018 in Newsletter
USPTO’s PTAB Issues “Frequently Asked Questions” Regarding Impact of Supreme Court’s SAS Institute v. Iancu Decision, But Provides Few Truly Useful Answers
By: Peter Schechter
Earlier this year, the U.S. Supreme Court ruled that the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office was required to either institute Inter Partes Review (IPR) of all challenged claims on all grounds raised, or not, in response to a petition challenging claims of a US patent on grounds of unpatentability. The PTAB’s practice of “partial institution” of IPR picking and choosing which of the petitioner’s grounds would actually be considered, was specifically held to violate the plain language of the Federal statute establishing the IPR post-grant challenge mechanism. Simply stated, it is the petitioner that frames the scope of the proceeding, not the PTAB, according to the statute and as confirmed by the U.S. Supreme Court in SAS Institute, Inc. v. Iancu (2018).
While the SAS decision clearly upset the existing scheme established by the PTAB’s rules and regulations, it was far from clear precisely how the PTAB would adapt its procedures to the holding of the SAS decision. On June 5, 2018, the PTAB issued a document titled “SAS Q&As” that was presumably intended to provide guidance to patent owners, petitioners, and practitioners regarding the revised procedures that would be followed by the PTAB. The document may be viewed at https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf. Unfortunately, beyond stating—as it must—that the PTAB will follow the U.S. Supreme Court’s ruling that IPR institution will be a “binary” decision (that is, all challenged claims on all asserted grounds will be reviewed, or none at all), not much in the way of truly helpful guidance is actually provided as answers to the “frequently asked questions.”
The questions and answers are grouped into the following categories:
- Effect of SAS on AIA proceedings generally
- Effect of SAS on on-going partially-instituted proceedings
- Effect of SAS on instituted challenges previously denied for statutory reasons
- Effect of SAS on future challenges that could be denied for statutory reasons
- Content of institution decisions post-SAS
- For additional questions about SAS
In each category or group, the PTAB explains that in response to various commonly encountered situations, it “may” do one thing or it “may” do another; basically, the PTAB “may” do whatever it pleases, as long as any new institution decision is “binary.”
For example, in each pending proceeding where a now-impermissible “partial institution” order was issued (there are thousands of such pending cases), the PTAB has merely provided a vaguely described set of optional actions that may be taken, including, but not limited to: authorizing additional briefing, allowing submission of additional evidence, conducting one or more supplemental hearings, extending deadlines. In practice, we have received orders in pending IPRs requesting that the parties themselves discuss and propose precisely how the IPR should actually be modified in order to comply with SAS. Adverse parties in an IPR typically have diametrically opposed interests in both the outcome of the IPR and the procedural steps by which their opposed desired outcomes are achieved. The PTAB’s practice of asking the parties to “fix” the IPR themselves is unwanted by, and unhelpful to, most parties, generally speaking.
The PTAB also indicates that there are a number of pending “partial institution” IPRs in which the initially denied challenges (whether as to claims or on particular statutory grounds) will not be modified to include those denied challenges, yet the claims/grounds will be addressed in the PTAB’s Final Written Decision in such cases. At the same time, the PTAB emphasizes that its institution decision is “a preliminary finding based on an incomplete record and before the parties have had a full opportunity to be heard.” It remains to be seen, then, how these apparently conflicting views will be resolved in a way that complies with the Supreme Court’s SAS mandate.
Moreover, one of the most important “frequently asked questions” is not mentioned at all, let alone answered: “how will the PTAB handle all of the remands from the Court of Appeals for the Federal Circuit (CAFC) that require a new Final Written Decision to be issued that addresses ‘all challenged claims’ as required by the statute, and not merely those claims for which IPR trial was originally instituted?” Will an entirely new IPR proceeding be conducted? Will the PTAB simply issue a new Final Written Decision repeating its reasons for denying institution of previously un-reviewed claims and/or challenge grounds “based on an incomplete record and before the parties have had a full opportunity to be heard?” Will the PTAB leave it to the adversaries to figure it all out? These are hardly idle inquiries; such remands have already been issuing from the CAFC, even before the PTAB issued its “SAS Q&As” on June 5. In addition, some trial courts have already refused to accept as “final” some PTAB Final Written Decisions—even those that have been affirmed on appeal—that do not comply with SAS. In this last-mentioned situation, the parties may be placed in a state of perpetual limbo, with the IPR process not yet “final” in the eyes of the trial court, yet without any procedural mechanism for obtaining adequate PTAB action to make it so.
Question B.11 of the PTAB’s “SAS Q&As” is as follows:
B11. Q: If a Final Written Decision has issued in a proceeding and the case is on appeal to the Federal Circuit, will the Board reopen the case to address SAS?
A: No. The Board cannot reopen a case on appeal or after the trial certificate has issued.
This misses the point: what will the PTAB do upon remand of such proceedings? Practitioners are still asking this important question, without any guidance or answers being provided by the PTAB. Hopefully, useful answers will be forthcoming as this scenario plays out again and again in the coming months.