All or Nothing: PTAB Must Institute IPR on All Challenged Claims and Grounds, or None at All

This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. The Court explained that its holding was compelled by a plain reading of 35 U.S.C. § 318(a), which states that the PTAB must issue a final written decision on “any patent claim challenged by the petitioner.” SAS Institute did not decide, however, whether the PTAB’s final written decisions must also address all grounds raised in a petition. The Federal Circuit has subsequently provided a clearer answer.

Immediately after SAS Institute, the Patent Office issued guidance and held a “Chat with the Chief” on the impact of the decision. In the guidance and during the “chat,” the Patent Office explained that the PTAB would begin instituting review of all challenges raised in a petition—meaning all claims and all grounds—even if SAS Institute arguably did not require it. The Federal Circuit’s subsequent decisions have addressed cases caught in the transition—those cases where the IPR proceeding, which had been completed without addressing all claims and grounds, was on appeal. For example, in PGS Geophysical v. Iancu, the Federal Circuit stated that “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” but declined to remand because no party asked for it. Subsequently, in Adidas v. Nike, the Federal Circuit noted the Patent Office’s guidance regarding non-instituted grounds for review and agreed that “remand is appropriate here” for the PTAB to address those non-instituted grounds.

Although these decisions indicated that the Federal Circuit interpreted SAS Institute to require institution on all or no grounds, the Federal Circuit’s recent decision in AC Technologies v. Amazon put many lingering questions to bed. There, the petitioner asked the PTAB to reconsider its final decision addressing some but not all grounds. The Federal Circuit held that, in addition to all claims, the PTAB “must similarly address all grounds of unpatentability raised by the petitioner” if it institutes an IPR trial. The Federal Circuit added that the PTAB “would have violated the statutory scheme” if it had not considered all grounds raised in the petition.

Takeaways:

AC Technologies illustrates that the practical implications of SAS Institute continue to be resolved. Petitioners should be wary of overloading a petition with weaker arguments as to certain claims or grounds. The PTAB may deny petitions consisting mostly of weak arguments, even if it would have found some of the grounds otherwise meritorious as to some of the challenged claims. Inversely, getting institution on weak arguments that ultimately fail could create broad estoppel to challenging the patent in district court.

Patent owners will also need to consider new approaches. The common strategy before SAS Institute of whittling down the scope of the review by defeating arguments as to certain claims and grounds at the institution stage is more challenging since the PTAB will likely institute IPR on all challenged claims and all grounds or none at all. Patent owners hoping to defeat a petition now likely must respond to all challenges in the petition, not simply the weakest arguments.