The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), has bred considerable uncertainty about what to do with the multitude of pending inter partes review (IPR) cases that were instituted under pre-SAS standards. The adjudicators tasked with applying SAS in those cases—at the PTAB and the Federal Circuit—are now sorting through the fallout.
The PTAB reacted quickly by releasing guidance two days after SAS that outlined the agency’s initial response: (1) future institution decisions will be decided on an all-or-nothing basis as to all claims and all grounds in the petition, (2) panels presiding over pending trials that were instituted on fewer than all claims and grounds in the petition are issuing orders to supplement the institution decision and institute on all claims and grounds, and (3) panels may take further actions in individual pending cases, such as allowing supplemental briefing or extending trial deadlines, depending on factors such as the particulars of the case, the stage of proceedings, and input from the parties. The PTAB noted that it will continue to assess its response to SAS and may issue additional guidance in the future.
The Federal Circuit is likewise wrestling with SAS. As of April 30, the Federal Circuit’s docket included approximately 650 pending appeals in cases originating from the PTO. Roughly half of those are IPR cases, and given the PTAB’s previously widespread practice of partial institution, pending appeals potentially affected by SAS likely number in the hundreds.
Not surprisingly, the Federal Circuit has exhibited a keen interest in developing substantive answers as well as efficient procedures to resolve the various issues SAS poses for those cases. For example, throughout the court’s May session, judges questioned litigants across the board about how they should handle SAS—both as to the appeals before them as well as other issues that may arise. In addition, the Federal Circuit has now issued a raft of orders for supplemental briefing on issues including (1) whether the court has appellate jurisdiction where the PTAB did not address all claims challenged in the petition, and (2) what the court can do when the PTAB failed to address all challenged claims but neither party raised SAS on appeal.
While open questions remain on those and other issues, signs from the PTAB and especially the Federal Circuit indicate that further post-SAS adjustments should be expected soon. Preserve your issues and stay tuned.