Institution decisions at the Board are rarely changed, and cannot be appealed. Following institution, the timeline for trial is fast and unforgiving. But what happens when the Board leaves its institution decision open to modification in the future? This is the scenario playing out in an ongoing IPR trial.

In ADAMA Agricultural Solutions, Ltd v. Finchimica SpA, the petitioner sought institution on multiple grounds aligned with different claim constructions. The Board instituted trial on a ground aligned with its preliminary claim construction, and declined institution on an additional ground aligned with a claim construction it previously rejected during an interference between the parties. However, the Board expressly left open the option to change its mind and institute trial on the additional ground if its final conclusions regarding claim construction make it “necessary and appropriate” to do so.

This decision raises the possibility of an institution decision changing at trial, which has strategic implications for both parties—but of immediate interest, the patent owner will be faced with a decision of whether to argue in its response for the narrower claim construction it wanted but the Board preliminarily rejected. If the patent owner is persuasive with such a claim construction argument, it may open the door to the Board instituting trial on the additional ground.

Accordingly, in arguing for that claim construction, the patent owner (which does not get another paper as of right after its response) would also face a decision of whether and how thoroughly to argue against the additional ground. The patent owner response is limited to 14,000 words, such that the patent owner may have to make tradeoffs when it allocates those words to arguing against grounds that were instituted, for a change in claim construction, and against grounds that might come into play if the Board changes its claim construction.

Alternatively, the patent owner might count on the Board providing an opportunity to address changes in claim construction and the additional ground if the Board changes its position. In SAS Institute, Inc. v. ComplementSoft, LLC, the Federal Circuit recently took issue with a last-minute change in claim construction by the Board, stating that it needed to provide “reasonable notice of the change and the opportunity to present argument under the new theory.” Possibly the Board would extend the trial to allow the parties to submit additional papers addressing the new claim construction and additional grounds. But to extend beyond the one-year statutory limit, the Board must find “good cause,” and to date, it has seldom elected to make use of this provision to extend a trial.

Moreover, unlike in SAS Institute, the Board from the outset has definitely said “maybe” such that the parties are on notice of the claim construction and the possibility that the Board might adopt the additional ground. What, if any, additional opportunity the patent owner might get to rebut the additional grounds is therefore uncertain.

Takeaways

IPR trials often follow a predictable path. However, parties must be prepared for departures from the norm. Whether the Board ultimately decides to change its institution decision in this case remains to be seen. If it does, the trial likely will continue to move quickly. Given the timeframe for trial imposed by the statute, parties need to be thinking about changes that could occur at trial—before they do.