By: Sue Gerber and Matt Johnson

We recently reported some early observations about possible trends at the PTAB in the wake of the Supreme Court’s decision in SAS Institute Inc. v. IancuSee Observations:  Three Weeks After Supreme Court’s SAS Institute Decision.  On this one-month anniversary of the SAS decision, the PTAB’s decision in Dish Network Corp. v. Customedia Technologies, Inc. adds an interesting twist.  CBM2017-00019 (PTAB May 16, 2018) (Paper 50).

In this case, the PTAB modified its institution decision to include all petitioned grounds based on the SAS decision.  Id. (Paper 49.)  Then, on May 15, 2018, the PTAB held a conference call with the parties to discuss the case schedule for completing review of the instituted grounds.  The Petitioner sought authorization to file a motion to withdraw from consideration the newly instituted grounds in order to avoid estoppel under 35 U.S.C. § 315, and the Patent Owner opposed the request.  The PTAB agreed with the Patent Owner and denied the request for authorization “because Petitioner has not shown good cause to withdraw grounds from consideration.  Under these circumstances, we are unpersuaded that avoiding estoppel is good cause.”  Id. (Paper 50 at 2.)

We will continue to monitor decisions from the PTAB and report how the PTAB panels and the parties are addressing issues flowing from the SAS decision.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.