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IP Alert: SAS Requires Institution on All Grounds, Not Just All Claims

July 2, 2018

Today the Federal Circuit issued a precedential order remanding the case of Adidas AG v. Nike, Inc. to the Patent Trial and Appeal Board (PTAB). Adidas had challenged two Nike patents via inter partes review (IPR) proceedings, raising two grounds of review in each case. The PTAB granted Adidas’s petitions and instituted IPR proceedings for all of the challenged claims, but limited its review to only the first invalidity ground. In October 2017, the PTAB issued a final written decision holding that Adidas had not prevailed on this first ground. Adidas appealed.

On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that if the PTAB institutes review proceedings, the review must proceed “in accordance with or in conformance to the petition” (internal quotation marks omitted).

Nike argued that the SAS case was inapplicable to the present appeal because SAS only required institution of all claims, not all grounds. In this case, argued Nike, the first asserted invalidity ground encompassed all challenged claims, so the PTAB need not have instituted the IPR for the second ground. The Federal Circuit disagreed, concluding that a Supreme Court’s reasoning in SAS—that the petition controls the scope of the proceeding—likewise requires that the PTAB institute on all grounds raised in the petition if instituting an IPR.

Nike further contended that Adidas had waived its “all grounds” arguments by failing to present it to the PTAB. The court rejected Nike’s waiver argument, observing that Adidas had promptly acted to request remand after the SAS case was decided.

Today’s decision clarifies an aspect of PTAB practice. Please contact Fitch Even partner Paul B. Henkelmann for more information.

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