Federal Circuit Summaries

Before Moore, Wallach, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: The Supreme Court’s decision in SAS Institute Inc. v. Iancu requires the Board in an instituted IPR proceeding to address all grounds for unpatentability raised in the IPR petition in its final written decision.

Adidas petitioned for inter partes review of two patents owned by Nike. Each petition raised the same two grounds challenging all claims at issue. Both grounds were that the claims were obvious but based on two different reference combinations. The Board instituted IPR on all challenged claims, but only as to one of the grounds. The Board’s final written decisions found all claims patentable over the prior art relied upon in the first ground raised in the petition. However, the final written decisions did not address the patentability of the challenged claims in view of the second ground. Adidas appealed. During the pendency of the appeal, the Supreme Court ruled, in SAS Institute, Inc. v. Iancu, that IPRs “must proceed ‘in accordance with in or conformance to the petition.” In view of SAS, Adidas filed a motion for remand to the Board for consideration of the second ground raised in its petitions. Nike opposed and argued that SAS only requires the Board to address all challenged claims, not all grounds for unpatentability raised in the petition.

The Federal Circuit found that the SAS decision requires consideration of all the grounds originally raised in the petition if the proceedings are instituted. The Court noted that SAS held “[n]othing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.” The Federal Circuit also relied on the statement in the SAS decision that “the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation . . . [and] that the petitioner’s contentions, not the Director’s discretion, defined the scope of the litigation.” The panel found that there was “no reason to treat this case differently” from the Federal Circuit’s other recent holdings which require the Board’s final written decision to address all claims raised in an IPR petition. Accordingly, the Court remanded the case to the Board so that the Board can “promptly issue a final written decision as to all grounds raised in Adidas’s petitions.”