USPTO Issues Guidance on Effects of Supreme Court’s Decision in SAS Institute on PTAB Trials

On Thursday, April 26th, the U.S. Patent and Trademark Office issued new guidance regarding the effects of the U.S. Supreme Court’s judgment in SAS Institute Inc. on America Invents Act (AIA) trial proceedings held before the Patent Trial and Appeal Board (PTAB). Along with the new guidance, the USPTO also announced a webinar with PTAB Chief Judge David Ruschke taking place next Monday to further discuss the impact of recent Supreme Court decisions regarding the trial activities conducted at the PTAB.

In SAS Institute, the Supreme Court held that the PTAB must decide the patentability of all claims challenged by a petitioner if the PTAB decides to institute inter partes review (IPR) proceedings on the petition. “As required by the decision, the PTAB will institute as to all claims or none,” the new USPTO guidance reads. Going forward, any IPRs instituted by the PTAB will look at the validity of all claims challenged by the petitioner.

For pending trials which have already been instituted, the USPTO will be applying the precedent set by SAS Institute in a retroactive manner. Pending IPRs which have been instituted on all claims challenged by the petitioner will continue in their normal course. Pending trials which were instituted on only part of the challenged claims, however, can be adjusted to include all claims challenged by the petitioner if the panel of administrative patent judges (APJs) issues an order to institute on all claims.

If the panel of APJs takes this action to include previously challenged claims, the panel may take further action to manage the trial proceeding including permitting additional time, discovery or hearings. This includes cases which are near the 12-month statutory deadline for deciding AIA trials, which may be extended on a case-by-case basis. Both the patent owner and petitioner in an AIA trial which is expanded to include originally challenged claims will meet to discuss the need for additional briefing in the case as well as any schedule adjustments. In cases where neither party requests additional briefing or scheduling adjustments, the PTAB may act sua sponte to request such.

Parties currently involved in AIA trials at the PTAB may contact their panel if they have specific questions on how the SAS Institute guidance will affect their case. General questions on the guidance can be e-mailed to [email protected]. More information on the effects of both SAS Institute and the Supreme Court’s decision in Oil States on PTAB trials will be discussed at a “Chat with the Chief” webinar with Chief Judge Ruschke, hosted by the PTAB next Monday, April 30th, from noon to 1 PM ET. According to the USPTO’s guidance, Ruschke will discuss the impacts of these cases and answer questions during the webinar.


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