Remands of Partially Instituted AIA Trials After SAS

In SAS Institute v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that when an inter partes review is instituted, the PTAB must decide the patentability of all claims challenged by the petitioner. Recently, the Federal Circuit and the PTAB have addressed issues concerning jurisdiction and remand procedure in cases originating from partially instituted AIA trials, discussed below.

The Federal Circuit Has Jurisdiction Over Appeals from Partially Instituted AIA Trials

In PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018), the Federal Circuit determined that it has jurisdiction to address an appeal from a final written decision arising from a partially instituted AIA trial proceeding. A key issue for the court was whether the decisions rendered by the PTAB in the IPRs constituted a final agency action. The court determined that the combination of the non-institution decision and the final written decision constituted a final agency action:

The standard for “final agency action” under the Administrative Procedure Act (APA)…is met. Generally, agency action is final when the agency’s decision-making process is complete and the action determines legal “rights or obligations” or otherwise gives rise to “legal consequences.” [Citations omitted.] Here, the Board issued an institution decision and a final written decision in each IPR. In each matter, the Board’s decisions are final, even if erroneous, because they “terminated the IPR proceeding” as to all claims and all grounds,…and the Board made patentability determinations that affect the patent rights of PGS…. [I]n SAS, the Court reviewed the Board’s decisions under the APA,…and despite concluding that the Board erred in its institution decision by denying review of some challenged claims, the Court nowhere suggested either the absence of a “final agency action” or the absence of jurisdiction on this court’s part.

The court noted that the legal error committed by the PTAB, i.e., partially instituting the trial, does not negate the finality of the PTAB’s action:

In two stages, the Board finally disposed of all the challenges (i.e., claims and grounds) in the petitions placed before it. Some of what the Board did is now seen to be legally erroneous under SAS, but legal error does not mean lack of finality. For those reasons, we conclude that we have jurisdiction to hear PGS’s appeals.

The court declined to address the non-instituted claims and grounds sua sponte. The court noted that the parties and the USPTO did not request “any SAS-based action — whether to block…[a decision on] appeal on the instituted claims and grounds or to revive the ‘non-instituted’ claims or grounds.” In the absence of such request, the court concluded that “we need not, and will not, sua sponte revive the ‘non-instituted’ claims and grounds.”

The Federal Circuit Approves the Application of SAS to Non-Instituted Claims and Grounds

As previously discussed, the PTAB has indicated that if trial is instituted, the PTAB will institute on all claims and challenges raised in the petition. In PGS, the Federal Circuit approved the PTAB’s approach, explaining that SAS requires a “simple yes-or-no” approach to institution where all challenged claims and grounds set forth in the petition are either embraced or rejected:

We will treat claims and grounds the same in considering the SAS issues currently before us. In light of SAS, the PTO issued a “Guidance” declaring that the Board will now institute on all claims and all grounds included in a petition if it institutes at all. [Citation omitted.] The cases currently in this court, which emerged from the Board under pre-SAS practice, raise certain transition issues. We will address those issues without distinguishing non-instituted claims from non-instituted grounds. [Emphasis added.]

Equal treatment of claims and grounds for institution purposes has pervasive support in SAS. Although 35 U.S.C. § 318(a), the primary statutory ground of decision, speaks only of deciding all challenged and added “claim[s],” the Supreme Court spoke more broadly when considering other aspects of the statutory regime, and it did so repeatedly….

We read those and other similar portions of the SAS opinion as interpreting the statute to require a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition, and we have seen no basis for a contrary understanding of the statute in light of SAS.

Judicial Efficiency May Weigh in Favor of Institution Even If the Issue Was Not Raised on Appeal

In Broad Ocean Techs., LLC v. Nidec Motor Corp., 727 Fed. Appx. 686 (Fed. Cir. 2018), the Federal Circuit granted petitioner’s motion for remand to consider the patentability of claims 1-6, which were not instituted for review below. The petitioner did not request remand to consider a non-instituted ground challenging claims 7-13. On remand, the Board instituted on both the previously non-instituted claims and grounds. IPR2015-01617, Paper 48 (PTAB Aug. 28, 2018). The Board was not persuaded that petitioner had waived the non-instituted ground by not raising the issue on appeal:

We again acknowledge that this argument “is not without merit,” but are not persuaded that we misapprehended or overlooked the argument in our Order. [Citation omitted.] Although the Federal Circuit’s remand order refers only to claims 1–6, it includes no specific language indicating that it had considered, much less found, that Petitioner waived asserting its further challenges to claims 7–13.

Among the reasons provided in our Order, considerations of judicial economy weigh particularly strongly in favor of institution of all grounds set forth in the Petition that were not part of the previous trial…. The additional burden on the parties and the Board to consider those claims in light of art that it must now consider is modest, particularly when weighed relative to the significant potential burden that would be imposed on the parties and the Board by a second remand. [Citation omitted.] Such a second remand, which might realistically result were we to limit review to claims 1–6, would require reconsideration of a prior-art reference that is before us now and would result in significant delay to the parties and public, potentially involving yet another appeal to the Federal Circuit.

The PTAB May Choose to Not Conduct Trial for Certain Non-Instituted Grounds

In Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018), the Federal Circuit remanded for consideration of an issue pertaining to public accessibility, i.e., an issue unrelated to SAS. The court stated that on remand, the PTAB “will consider” previously non-instituted grounds:

Because the final written decisions relating to this appeal do not address every ground raised in the petitions, we understand from the Board’s recent guidance document [citation omitted] that it will consider the previously non-considered grounds on remand.

On remand, the Board determined that trial would be conducted on four of the five previously non-instituted grounds. IPR2015-00780, Paper 55 (PTAB Sep. 4, 2018). The Board explained that trial was not necessary for one of the grounds in light of previous determinations made on appeal and during trial:

The non-instituted ground that claim 1 is anticipated by the ’928 Appl. is subsumed by the Federal Circuit’s determination that claim 1 is not obvious over the ’928 Appl. and that we “reasonably found no persuasive evidence that the ’928 Application teaches a derotational use for its compression/distraction device or that it would have been obvious to use such a device to ‘in a single motion simultaneously rotat[e]’ multiple vertebrae ‘to achieve an amelioration of an aberrant spinal column deviation condition,’ as required by the claims of the ’358 Patent.” [Citation omitted.] In view of our prior determination, affirmed by the Federal Circuit, that the ’928 Appl. does not disclose all the limitations of claim 1, it is not necessary for us to conduct a trial on the non-instituted ground that claim 1 is anticipated by the ’928 Appl.

The Federal Circuit Will Consider the Timeliness of Remand Requests

In Ulthera, Inc. v. DermaFocus LLC, No. 18-1542, 2018 BL 274823 (Fed. Cir. May 25, 2018) (non-precedential), the Federal Circuit granted a motion to remand in view of SAS. On appeal, the IPR petitioner argued that “remand is necessary under SAS for the Board to issue a final written decision with respect to the patentability of [previously non-instituted claims].” The petitioner further argued that “remanding the case now will conserve judicial and party resources because this appeal is in its early stages, as briefing has not yet commenced.” The court granted the motion to remand:

In SAS, the Supreme Court held that under the plain language of § 318(a), “the Board must address every claim the petitioner has challenged,…and that it is “the petitioner, not the Director, who gets to define the contours of the proceeding.” [Citation omitted.] Under the circumstances of this case, where it is the petitioner who is making the request to remand and no merits briefing has yet occurred, we find that it is the most efficient course of action to remand for the Board to promptly issue a final written decision as to the challenged, but not instituted, claims. Importantly, doing so will ensure later on that there is no dispute or concern in the parallel district court proceedings regarding the scope of estoppel under 35 U.S.C. § 315(e)(2).

The fact that the petitioner requested the remand, and that such request was being made at an early stage of the appeal, weighed in favor of granting the motion to remand. In response to the patent owner’s concern that a remand would delay the parallel civil action, the court noted that the decision of whether to lift the stay rests with the district court:

Finally, as to DermaFocus’ concern that a remand will unnecessarily delay its civil action, we note that DermaFocus has filed a motion at the district court to lift the stay of proceedings in light of the changed circumstances that occurred as a result of the Board’s final written decision. We, of course, leave it to the sound discretion of the district court on how to handle its case and as to whether that motion should be granted.


The Federal Circuit has jurisdiction over appeals originating from partially instituted AIA trial proceedings. In situations where parties do not seek remand or any other SAS-based relief, the court may be reluctant to remand sua sponte. The court may grant remand requests based on SAS, particularly if the request is made early in the appeal. On remand, the PTAB will address any non-instituted claims and grounds. Standard Operating Procedure 9 provides guidance on how the PTAB approaches remands. The procedure adopted by a panel may depend on the nature of the non-instituted claims and/or grounds when taken in light of previous determinations made during trial and on appeal.

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