Last week, the Federal Circuit granted, in part, a panel rehearing request and remanded an IPR to the PTAB in view of SAS to address claims that were not initially instituted by the Board. Broad Ocean Tech., LLC v. Nidec Motor Corp., No. 2017-1933 (Fed. Cir. June 14, 2018) (Slip Op.). In this case, the Federal Circuit had affirmed the PTAB’s Final Written Decision just weeks before the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).

At the PTAB, Broad Ocean petitioned for review of claims 1-13 of the patent at issue. Broad Ocean, at *1. At institution, the PTAB instituted only on claims 7-13, declining to review claims 1-6. Id. at *2. In the Final Written Decision, the PTAB determined that claims 7-13 were not unpatentable. Id. Broad Ocean appealed the PTAB’s decision to the Federal Circuit, and in both of its briefs noted that “the Board erred by not addressing claims 1-6 in the Final Written Decision.” Id. On April 5, the Federal Circuit affirmed the PTAB’s Final Written Decision in a Rule 36 judgment. Id.

On May 8, two weeks after SAS, Broad Ocean filed a combined petition seeking rehearing from both the panel and the en banc Federal Circuit. Id. As might be expected, Broad Ocean sought rehearing as to claims 7-13 – the claims on which the PTAB decided against it in the Final Written Decision – but the Federal Circuit denied that request. Id. For claims 1-6, Broad Ocean argued that the Federal Circuit should grant rehearing and remand to the PTAB to address those claims in a Final Written Decision in view of SAS. Id. The original panel of Circuit Judges Dyk, Wallach, and Chen agreed with Broad Ocean. Id. at 2-3.

This is an interesting request by, and result for, the petitioner. Given that it lost on claims 7-13 at the Final Written Decision stage and could not convince the PTAB to institute on claims 1-6, it would seem to be an uphill battle on claims 1-6 on remand. And now, because the PTAB has been ordered to address claims 1-6 in a Final Written Decision, estoppel will also come into play for petitioner on those claims as well if petitioner is unsuccessful on remand.