In October 2017, the U.S. Supreme Court issued a boon to patent challengers (also known as “petitioners” at the Patent Trial and Appeal Board (PTA)) in SAS Institute v. Iancu, holding that PTAB must issue a final written decision as to any patent claim challenged by an inter partes review (IPR) petitioner. Immediately thereafter, the PTAB issued written guidance explaining its new “binary” decision following SAS, namely to “institute as to all claims or none.” Currently, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”  The PTAB has since clarified that, with respect to “challenges,” it meant that not only would the it cease its “partial institution” practice of instituting on fewer than all claims (forbidden by SAS); it would also cease instituting on fewer than all grounds of invalidity raised in a challenge (not specifically forbidden by SAS).

The SAS ruling had immediate and significant effects on certain post-grant proceedings on appeal. In pending appeals of cases in which the PTAB had instituted a trial on some, but not all grounds or claims (a partially instituted case), the U.S. Court of Appeals for the Federal Circuit has summarily granted remand requests. SAS also opened up a new avenue of appeal for patent challengers. Previously, if the PTAB declined to institute a ground or claim raised by the patent challenger, there was no ability to appeal that (institution) decision. Now that the PTAB must institute on all grounds/claims or none—the patent challenger can continue to fight its challenges through appeal (assuming the PTAB’s “binary” decision is to institute trial).

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