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IP Alert: PTAB Cautioned Not to Deviate from Grounds Raised in Petition

July 19, 2018

On June 19, in Sirona Dental Systems GMBH v. Institut Straumann AG, the Federal Circuit stated that the Supreme Court’s SAS Institute Inc. v. Iancu decision requires that an inter partes review must proceed “in accordance with or in conformance to the petition.” The court cautioned the Patent Trial and Appeal Board (PTAB) not to substitute its own reasoning for the grounds raised by the petitioner, explaining that “nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.”

Institut Strauman and Dental Wings filed a petition for inter partes review of a patent based on multiple grounds of unpatentability. The PTAB instituted review based on some of the asserted grounds. Eventually the PTAB issued a final written decision that found all of the claims unpatentable as obvious. Contending that one of those grounds was not raised in the petition, but initiated by the PTAB, Sirona appealed.

The court disagreed with Sirona and held that the PTAB had indeed rested its obviousness conclusion on grounds that the petitioner had raised, not substituting its own judgment. In dicta, however, the court stated:

An inter partes review must proceed "in accordance with or in conformance to the petition." SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (internal quotations omitted). "Nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design." Id. (emphasis in original). "The rest of the statute confirms, too, that the petitioner's petition, not the Director's discretion, is supposed to guide the life of the litigation." Id. "[T]he statute tells us that the petitioner's contentions, not the Director's discretion, define the scope of the litigation all the way from institution through to conclusion." Id. at 1357. It would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory, as Sirona contends.

This language possibly signals future holdings along these lines by the court on appropriate facts.

Sirona also argued that the PTAB erred when it denied Sirona’s contingent motion to amend, arguing that the PTAB improperly placed the burden on Sirona to prove that the proposed substitute claims were patentable. The court vacated the PTAB’s order in light of Aqua Products, Inc. v. Matal, which held that the petitioner bears the burden of proving that proposed amended claims are unpatentable.

This decision may be significant for patent owners, since it states that the PTAB must only consider the grounds for unpatentability that are raised in the petition.

For more information on this ruling, please contact Fitch Even partner Thomas F. Lebens, author of this alert.

Fitch Even summer associate Zachary Van Engen contributed to this alert.

 

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