Unanswered Questions After SAS

Last week was a busy week in American intellectual property with the Supreme Court issuing two decisions involving Inter Partes Reviews (IPRs). On April 24, 2018, the Supreme Court first issued a much-anticipated decision in Oil State Energy Services, LLC v. Greene’s Energy Group, LLC (Oil States), where it upheld the constitutionality of the IPR practice. That same day, the Supreme Court issued a five to four decision in SAS Institute Inc. v. Iancu (SAS), holding that when the Patent Trial and Appeal Board (PTAB) institutes an IPR, it must decide the patentability of all challenged claims, not just some of them.  The first opinion concerning Oil State is addressed in a separate blog post. In this post, some interesting, and perhaps unaddressed, issues are discussed concerning the SAS decision.

In the SAS decision, Justice Gorsuch, writing for the Court, held that the U.S. Patent and Trademark Office (USPTO) has been improperly issuing “partial-institution” decisions and holding trials on only a subset of challenged claims. According to the Court, the plain text of 35 U.S.C. §318(a) requires that the PTAB address all challenged claims in a final written decision.  As a result, when the PTAB institutes an IPR, it must decide the patentability of all challenged claims as opposed to only granting institution on and/or fully considering only some of the challenged claims. 

Following the SAS decision, on Thursday, April 26, 2018, the USPTO issued a one-page guidance memorandum for moving forward after SAS. According to the guidance memo:

1. The PTAB will institute IPRs as to all claims or none. Going forward, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”
2. For pending trials in which a panel has instituted trial on all of the challenges raised in the petition, the panel will continue with the proceeding in the normal course.
3. For pending trials associated with a partial-institution decision, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.” In addition, “the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding” to take into account the shift. “For example, if the panel has instituted a trial and the case is near the end of the time allotted for filing the Patent Owner Response, the panel may extend the due date for the Patent Owner Response to enable the Patent Owner to address any additional challenges added to the proceeding.”
4. The Petitioner and Patent Owner are expected to meet and confer to discuss the need for additional briefing and/or any other adjustments to the schedule. “It is expected that the parties will work cooperatively amongst themselves to resolve disputes and propose reasonable modifications to the schedule.”
5. The PTAB hosted a “Chat with the Chief” webinar on Monday, April 30, 2018, from noon to 1 pm ET (US) to discuss the SAS decision.

While the guidance appears to address some immediate concerns about how IPRs before the PTAB will proceed in light of the Supreme Court’s SAS decision, there are still some unanswered questions. Most notably, the USPTO guidance document fails to address how “partially-instituted” cases currently pending before the PTAB will continue, only saying that the “panel may issue an order” and “may take further action.” It appears, at least from the wording of the guidance, that perhaps only cases that have not yet received a decision on whether they will be instituted will be subject to the new guidance. This raises the question of how currently pending cases, such as those for which an IPR trial has been instituted, but appeals are not yet finalized, will be handled.

It is important to further note that the guidance does not appear to address what effect, if any, the SAS decision will have on previously decided cases that were the result of “partial-institution” decisions. More particularly, patent owners and patent practitioners will need to know whether the previously decided IPR decisions are subject to the new decision, or if will there be opportunities for either party to reopen to the proceeding.

While last week was definitely interesting in terms of IPR decisions, it seems to further compound uncertainties in the US patent system by raising many additional questions that the USPTO, PTAB, and the US courts will have to sort out in the near future. Stakeholders should stay tuned because more developments concerning IPR processes are sure to follow, perhaps raising even more questions and even more uncertainty. It will be interesting to see what effect, if any, these cases will have on how the USPTO and/or Congress revisit the America Invents Act and address the many issues relating to IPR proceedings.