On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, where the Court held that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim challenged by an IPR petitioner. Just two days later, the PTAB issued written guidance on the impact of the SAS decisions on AIA trial proceedings.

The PTAB guidance contains a number of important changes:

  • The PTAB will institute as to all claims or none. The guidance also notes that “[a]t this time,” the PTAB will institute as to all challenges raised in a petition.
  • Regarding pending trials, if the panel has instituted on all challenges in the petition, no changes will be made. If the panel instituted on only some of the challenges raised in the petition, the panel may issue an order supplementing the institution decision to include the challenges previously denied.
  • If a panel supplements an institution decision, they may take additional action to manage the trial proceeding, such as additional briefing, discovery, or argument time. If the parties receive an order supplementing the institution decisions, the parties shall meet and confer to discuss the need for any additional changes to the proceeding. The parties may waive any such changes, but if they wish to modify the proceeding they shall contact the Board to discuss any requests.

In at least one trial in which Jones Day is representing a party, the Board has already issued a supplemental institution decision. There, the Board had only instituted on one of the grounds presented in the petition. In the supplemental decision, the Board modified the institution decision to institute review on all the grounds presented in the petition.

In another rapid development, the SAS decision is affecting Federal Circuit appeals of previously decided IPRs. The parties were scheduled to argue Federal Circuit appeal no. 2016-2470 (relating to IPR2015-00313) on May 2, 2018. On April 27, 2018, the parties received a letter from the Clerk of Court advising them that the court requests the parties be prepared to address the SAS decision at oral argument.

Takeaways

The SAS decision has rapidly changed practice before the PTAB. Practitioners must closely watch for future changes. The guidance notes that the PTAB will continue to assess the impact of the SAS decision and will provide further guidance in the future if appropriate. Jones Day will continue to monitor the situation and will provide further updates in this blog.