In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board (PTAB), finding that institution decisions must institute not only on all challenged claims, but also on all challenged grounds. Adidas AG v. Nike, Inc., Case Nos. 18-1180, -1181 (Fed. Cir. July 2, 2018) (Moore, J).

Adidas sought inter partes review (IPR) of two of Nike’s patents, arguing that (1) each challenged claim would have been obvious based on the Reed and Nishida references, and (2) each claim would have been obvious based on the Castello, Fujiwara and Nishida references. The PTAB instituted the IPR but limited its institution to the first asserted grounds of invalidity. In its the final written decision, the PTAB held that Adidas failed to carry its burden with respect to the first asserted ground, but never addressed the petitioner’s second asserted grounds. Adidas appealed the final written decision and, following the Supreme Court’s decision in SAS, promptly moved to remand to the PTAB for consideration of the second asserted ground.

In remanding the case to the PTAB, the Federal Circuit noted that in SAS, the Supreme Court held that the institution decision must be “in accordance with or in conformance to the petition,” meaning that it must address all challenged claims and all grounds on which the challenge to each claim is based. The Supreme Court also explained that its decision applied to all pending IPRs at the time of the decision. The Federal Circuit then cited numerous cases decided since SAS that remanded appeals from IPR proceedings where motions to remand in light of SAS were promptly filed. Since the motion to remand in this case was prompt, and therefore not a waiver, the PTAB’s failure to institute on all challenged grounds mandated remand.

Practice Note: Be sure to immediately raise the issue of the PTAB’s failure to institute on all claims or all grounds the moment the mistake is identified. Failure to act promptly, even at the institution stage, may soon be held to result in a waiver of correcting the institution decision in favor of expediency.