June 11, 2018
As previously reported, the recent Supreme Court decision SAS Institute Inc. v. Iancu held that the Patent Trial and Appeal Board (PTAB) must decide the patentability of all claims challenged by the petitioner when the PTAB institutes an inter partes review. On June 5, the USPTO issued a “Frequently Asked Questions about SAS Implications” document (the “FAQ”) to further address how the PTAB would apply the SAS decision in issuing institution decisions and in dealing with ongoing partial institution proceedings. The document addresses several issues left open after SAS.
When instituting inter partes review proceedings, practitioners have questioned whether a petition might be denied if it fails to surpass a threshold number of grounds meriting institution. The FAQ explains that the PTAB will not impose such a threshold, but that the “panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system . . . the entire petition should be denied.” Additionally, if the panel finds that certain challenges do not meet the reasonable likelihood standard, they intend to indicate so in the decision to institute, even if instituting on all challenges.
For ongoing proceedings, practitioners have questioned how the PTAB will handle cases that were partially instituted. The FAQ explains that the PTAB will issue an order instituting review on all claims and all grounds, but will not restart the trial process for these proceedings. Based on a panel’s assessment of a case, the panel may recommend extension of the statutory deadline for a final written decision. Alternatively, the panel may receive a joint request filed by the parties for rehearing to waive additional claims and/or grounds or receive a motion by either party to limit claims and/or grounds.
Depending on the stage of the case, the panel may extend due dates for the patent owner response or petitioner reply and other procedural dates as necessary. Generally, if additional briefing and/or evidence is needed for either party to address the newly added claims and/or grounds, the parties can request to do so, and the due dates and timeline of the proceeding can be adjusted as necessary by the panel.
In proceedings already subject of a final written decision, the FAQ explains that either party can file a rehearing request or may request a conference call with the panel to discuss additional briefing and/or evidence to address additional claims and/or grounds. The panel may also extend or waive the rehearing deadline. However, if the case is already on appeal to the Federal Circuit, the PTAB cannot reopen the case.
For more information on this guidance from the USPTO, please contact Fitch Even partner David A. Gosse.
--Written by Fitch Even summer associate Zachary Van Engen
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