By: Josh Nightingale and Matt Johnson

On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in the petition.  No. 16-969, ___ US ___ (2018).[1]  The USPTO has now issued a short memorandum with guidance on the impact of SAS on AIA trial proceedings.[2]  Additionally, on April 30, 2018, the PTAB held a “Chat with the Chief” webinar, during which Chief Judge David Ruschke discussed the SAS decision and PTAB procedures moving forward.

Consistent with the memorandum, Chief Judge Ruschke explained during the webinar that the PTAB will now institute on all claims challenged or none of them.  Further, although not required by SAS, if the PTAB institutes a trial, it will institute on all challenges—meaning all claims and all grounds of unpatentability—raised in the petition.  In the webinar, Chief Judge Ruschke referred to the “binary” nature of the institution decision, with the panel instituting on everything in the petition or not instituting trial at all.

The memorandum states that for pending trials in which the Board has instituted on less than all challenges raised in the petition, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.”  During the webinar, Chief Judge Ruschke stated that alternatively, a panel may issue an order reversing its original institution decision and terminating the trial.  The Chief Judge explained that the panel will consider whether it would have instituted trial on all challenges in the first place, and if not, the trial should be terminated.

During the webinar, Chief Judge Ruschke clarified that a supplemental institution decision does not restart the 1-year statutory period of 35 U.S.C. § 316(a), which requires the PTAB to issue a final written decision within one year of its institution decision.  In trials where additional challenges are added to the proceeding, the PTAB will work to meet the 1-year deadline but such trials may be extended under the “good cause” provision of the statute.  Chief Judge Ruschke further stated that parties may agree to narrow the trial and only go forward with the originally instituted grounds and that panels should generally allow this.

Finally, during the webinar, Chief Judge Ruschke provided some hints as to how institution decisions might look following SAS.  Some commentators have speculated that in light of the binary institution decision mandated by SAS, the PTAB may discontinue its practice of providing detailed analyses in its institution decisions and may instead issue brief “institute” or “do not institute” decisions.  The Chief Judge stated that panels have discretion as to how much information to provide in their institution decisions.  However, he stated, the PTAB will continue to make efforts to provide useful information to parties at this early stage of the proceeding.  For instance, even when trial is instituted on all challenges, the PTAB may point out in its institution decision that the petitioner failed to show that there is a reasonable likelihood of prevailing with respect to some of the challenges.  If this is the case, then post-SAS institution decisions may look very similar to their pre-SAS counterparts.  But time will tell as to how panels handle their institution decisions going forward, and we will continue to monitor this area.


[1] For a more detailed discussion of the SAS Institute Inc. v. Iancu decision, see Supreme Court: No More Partial Institution Practice In AIA Reviews.

[2] See The Supreme Court’s SAS Decision Is Already Affecting Pending Proceedings for further discussion of the memorandum.

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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.