We have previously discussed the ramifications of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, which held that the PTAB cannot institute an IPR on only some of the petitioned claims. One open question was what the Federal Circuit would do with pending IPR appeals, such as that in SAS itself, where the PTAB instituted and decided the petitions on only some of the claims.

On Friday, the Federal Circuit addressed the question. See Ulthera, Inc. v. DermaFocus LLC, No. 18-1542 (Fed. Cir. May 25, 2018). Ulthera had petitioned for IPR of all 18 claims of DermaFocus’s U.S. Patent 6,113,559. The Patent Office, however, instituted review on only 16 of the claims—declining to institute review on dependent claims 5 and 10. In its Final Written Decision, the PTAB upheld the claims, and Ulthera appealed.

Some two weeks before its opening brief was due, Ulthera filed a motion for remand in view of SAS Institute, arguing that it would be more efficient to address all the claims together and that the appeal had not yet been briefed. See Doc. 14 (May 9, 2018). The Federal Circuit ordered DermaFocus to respond and invited the Patent Office to intervene. Doc. 17 (May 11, 2018). The Patent Office declined. Doc. 18 (May 18, 2018). DermaFocus opposed Ulthera’s motion. Doc. 20 (May 18, 2018). It argued that a remand was unnecessary, because, if independent claim 1 was deemed patentable over the prior art, dependent claims 5 and 10 would necessarily be patentable as well. DermaFocus also argued that the added delay in the PTAB proceedings would prejudice it in its district-court proceedings.

In a non-precedential opinion, the Federal Circuit remanded. It emphasized two facts: (1) it was the petitioner requesting the SAS remand and (2) no merits briefing had yet occurred. Under these circumstances, the Court found that it would be more efficient to address all the claims at once, noting that “doing so will ensure later on that there is no dispute or concern in the parallel district court proceedings regarding the scope of estoppel under 35 U.S.C. § 315(e)(2).”

Takeaway:

The Ulthera opinion suggests that parties who intend to seek a SAS remand in a Federal Circuit appeal may be well served to do so by motion before they file their opening briefs. Doing so saves the parties some of the expense of preparing a brief and improves the chances of a remand.