Adidas AG v. Nike, Inc., Nos. 2018-1180 and 2018-1181 (Fed. Cir. July 2, 2018)
The petitioner (i.e., alleged infringer) filed two inter partes review (IPR) petitions, challenging multiple claims of two patents based on two separate grounds. The Patent Trial and Appeal Board (PTAB) instituted on all claims, but on only one of the two grounds. The PTAB subsequently issued a final written decision holding that the petitioner had failed to meets its burden to show that any of the claims would have been obvious under the instituted ground. Following the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the petitioner appealed the PTAB’s decision, seeking a remand to the PTAB to consider the non-instituted ground in the IPR petitions. On appeal, the Federal Circuit agreed with the petitioner and remanded for the PTAB to consider the second ground.
The Federal Circuit addressed the issue of whether the SAS decision requires that the PTAB, if it institutes an IPR, institute on all grounds in the petitions. The court agreed with the petitioner that “the Supreme Court’s reasoning in SAS – that the petition controls the scope of the proceeding – likewise requires that the PTAB institute on all grounds raised in the petition.” The court rejected the patent owner’s argument that SAS only required institution on all claims in the petitions (as was done with the instant petitions) and not all grounds. Accordingly, the Federal Circuit granted the petitioner’s motion for remand and directed the PTAB to issue final written decisions as to all grounds raised in the petitioner’s petitions.