All Grounds Must Be Addressed in Final Written Decision

by | Sep 5, 2025 | Federal Circuit Appeal, Final Written Decisions, PTAB News

By: Daniel C. Sloan and Matt Johnson –

On July 29, 2025, Chief Administrative Patent Judge Scott R. Boalick circulated a memorandum to Members of the PTAB entitled “Final Written Decision Procedures for AIA Trial Proceedings.”  Absent extraordinary circumstances, all PTAB panels assigned to IPR and PGR proceedings where an oral hearing has not yet occurred will address all grounds raised in the petition for review in their final written decisions (FWD), effective immediately.  In support of these instructions, Judge Boalick said that this approach will “promote compact decision making” and ensure panels are not required to address ground for the first time on remand from Director Review or Federal Circuit appeal.

This policy builds on SAS Institute, Inc. v. Iancu, where the Supreme Court instructed the PTAB to decide the patentability of all claims a petitioner has challenged if the PTAB has instituted inter partes review.  584 U.S. 357, 362, 371 (2018).  Two days after SAS Institute was decided, the USPTO issued guidance confirming that it would apply to all challenges in institution decisions, and “to the extent claims are still pending at the time of decision,” FWDs.  USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).  The Federal Circuit has further held that, “if the Board institutes an IPR, it must similarly address all grounds of unpatentability raised by the petitioner.”  AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364 (2019) (citations omitted).  And earlier this year, the Federal Circuit clarified that a “ground” is not the prior art asserted in an IPR, but rather the legal theory of invalidity.  Ingenico Inc. v. IOENGINE, LLC, 136 F. 4th 1354, 1365–66 (Fed. Cir. 2025).  The major difference between the latest guidance and previous guidance is that (1) there is an explicit exception for extraordinary circumstances, and (2) it is directed at FWDs rather than possibly applying more generally.

No definition for “extraordinary circumstances” appears in the memorandum.  For that matter, there is no commentary on what might constitute extraordinary circumstances.  Nonetheless, the situations where such an exception would arise are sure to be highly context-specific and based on the totality of the circumstances.

The new guidance should avoid certain remands from the Federal Circuit from being necessary.  In some instances where multiple grounds are presented against a particular claim, a panel would find the particular claim unpatentable based on a first ground and deem the other grounds against the particular claim to be moot.  If the Federal Circuit would overturn the panel’s finding on the first ground, the case would need to be remanded to determine whether the other grounds rendered the particular claim unpatentable.  Now that all grounds will be addressed in the Final Written Decision, some remands that would otherwise be necessary may be avoided.

Takeaway

PTAB panels must now address all legal theories raised in a petition in FWDs.  Parties should expect more detailed FWDs, aiding in strategic decision-making for both patent defense and challenge.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.