Recently, the Patent Trial and Appeal Board (PTAB) issued guidance on the impact of SAS Institute Inc. v. Iancu on AIA trial proceedings.  Prior to SAS Institute, the PTAB routinely assessed whether or not to institute trial on a claim-by-claim basis.  In SAS Institute, the Supreme Court struck down the PTAB’s practice of granting “partial institutions,” holding that when the PTAB institutes an inter partes review (IPR), the PTAB must decide the patentability of all claims challenged in the petition.

Petitioners and patent owners in AIA trial proceedings should consider the following key points from the PTAB’s guidance:

  1. The PTAB will take an all-or-nothing approach to institution of claims challenged, and grounds raised, in a petition.  Claims and grounds that would have been filtered out at the institution stage prior to SAS Institute may now be litigated during the trial phase.  Parties should be prepared for the possibility of a broader range of issues being addressed at trial.
  2. Pending trials in which all of the grounds raised in the petition have been instituted will proceed “in the normal course.”
  3. For pending trials in which some but not all of the claims or grounds were instituted, panels will have substantial latitude to set the ground rules on a case-by-case basis.  For example, a panel “may issue an order supplementing the institution decision to institute on all challenges raised in the petition” and may permit additional time, briefing, discovery, and/or oral argument “depending on various circumstances and the stage of the proceeding.”  Parties requesting additional briefing and/or changes to the schedule should provide reasons why such changes are necessary.  For example, parties could argue that additional briefing is warranted to address previously non-instituted grounds, particularly given the potential for estoppel to arise with respect to such grounds.
  4. Since SAS Institute requires final written decisions to address all challenged claims and grounds raised, issues that would otherwise have been disposed of in an institution decision may now be fair game on appeal.  Parties should be prepared to litigate a broader scope of issues on appeal.

The PTAB’s guidelines take a flexible approach and do not require any specific procedure for pending cases that were partially instituted.  The PTAB noted that it will “continue to assess the impact of this decision on its operations” and will provide “further guidance in the future if appropriate.”

While the PTAB grapples with the impact of SAS Institute, key aspects of PTAB trials remain unchanged.  The peti­tion continues to be “the centerpiece of the proceeding both before and after institution” as indicated in the Supreme Court’s decision.  Petitioners and patent owners should continue to develop strategies focusing on the contents of the petition and supporting evidence.