As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before the Board going forward.  The panelists were Chief Judge David Ruschke, Vice Chief Judge Tim Fink, and Vice Chief Judge Scott Weidenfeller.

The panelists noted that out of approximately 800 cases currently pending before the Board, about 18-20% have been instituted on fewer than all challenged claims. (The percentage of petitions instituted on only a subset of all challenged grounds was not available as of the date of the webinar.)

As the USPTO noted in the memo it issued last week to address SAS Institute, the Board will now issue “binary”—all-or-nothing—decisions on all pending or new IPR petitions. That is, it will either institute on all challenges raised in the petition, or on none. The panelists clarified that, at least for now, “all challenges” includes all challenged grounds, not just all challenged claims.

For pending inter partes reviews that were instituted on fewer than all challenges, however, things are more complicated. In such cases, the panel may now issue supplemental institution orders instituting on all challenges, or denying institution altogether. The timing and outcome of such decisions will be determined on a case-by-case basis, depending on where each case is in the IPR timeline, and on what percentage of challenges were the subject of the initial institution decision. For example, if the Board instituted review on only one out of twenty claims challenged in a petition, it may now revisit the original institution decision and retroactively deny institution altogether because the alternative—proceeding with all 20 claims—would not be worth the Board’s or the parties’ efforts and resources.

The 12-month period for completing an IPR is still in force—a supplemental institution order would not restart this period—but a 6-month extension of the procedural schedule may be issued in some cases, especially those that are close to the twelve-month deadline. Interim procedural deadlines—such as for the submission of patent owner responses and petitioner replies—may also be extended. The Board strongly encourages petitioners and patent owners to confer and to request—or to affirmatively waive—additional briefing and an adjustment to the review schedule. Parties may also file a joint request for an IPR to proceed only on certain claims or grounds, or a joint request to terminate the review.

The kind of actions available to petitioners or patent owners depends on whether review of the petition in question has already been instituted. If review has not yet been instituted, the Board will follow the directive noted above to issue decisions either instituting on all challenges or on none. If the Board originally issued a decision instituting review of only some claims or some grounds, and issues a supplemental order instituting on all claims and grounds before the patent owner’s response is due, the patent owner may be given more time to address the additional claims and grounds that were not part of the original institution decision. If the petitioner has already filed its reply, either party may request a conference call with the panel to discuss what additional briefing and evidence may be needed to address the previously unaddressed claims or grounds—but given the parties’ respective burdens of proof, petitioners will only be permitted to provide responsive briefing and evidence; they would not be permitted to provide any new briefing or evidence.

If there has already been a hearing but the Board has not yet issued a final written decision, the parties may also request a conference call with their panel to determine how to address any previously unaddressed claims or grounds. After the issuance of a final written decision but before the time to request a rehearing has not passed, either party may file a request for rehearing to address any claims or grounds challenged in the petition that the Board did not consider. If the time for rehearing has passed but an appeal to the Federal Circuit has not yet been filed, the Board may extend or waive the rehearing deadline. In general, the panel is expected to help the parties resolve any disagreements on such procedural matters.

The panelists concluded the webinar by assuring the audience that the Board is committed to implementing the new changes wrought by SAS Institute in the most efficient and least disruptive manner. For now, the Board’s efforts are focused on day-to-day operations and on giving parties the requisite opportunities to have their cases revisited in view of the Supreme Court’s opinion. Precedential decisions issued by the Board in the coming months along with more guidance anticipated from the PTO will shape the Board’s practice and bring some much-needed clarity and predictability to the conduct of IPR proceedings before the Board. We will report new developments as they arise. Stay tuned!