PTAB confirms all or nothing approach to IPRs
The Patent Trial and Appeal Board (PTAB) has released guidance on how inter partes review (IPR) proceedings will be conducted in light of a US Supreme Court decision handed down earlier this week.
The Supreme Court’s 5-4 ruling in SAS Institute v Iancu was delivered on Tuesday, April 24. It confirmed that the PTAB cannot choose to review only some challenged claims in an IPR—it must assess them all.
In light of the judgment the PTAB has confirmed that now, if it institutes a trial, it will therefore be instituting on all challenges raised in the petition.
The PTAB said that in pending trials where a panel has instituted trial on only some challenges raised in the petition, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition”.
If that occurs the panel may also provide the parties with additional time and other concessions if appropriate in the circumstances. Cases nearing the end of the 12-month statutory deadline may be extended “to afford all parties a full and fair opportunity to be heard,” the PTAB said.
The guidance noted that the parties can agree to waive the additional timing or schedule changes.
Final written decisions given by the board in IPR proceedings such as this will therefore address all patent claims challenged by the petitioner as well as any new claims added through the amendment process, the PTAB said.
The guidance did not address whether the SAS ruling will have a retroactive effect on past decisions in PTAB proceedings.
Speaking to WIPR practitioners described the SAS decision as a “game changer” which “impacts a frequent practice of the board” and has the potential to create a “massive amount of needless work”, by changing the way in which IPR proceedings are conducted.
The PTAB said it will continue to assess the impact of the decision and provide further guidance if necessary.
It will also host a ‘ Chat with the Chief’ (Judge David Ruschke) webinar on Monday, April 30, in which it intends to discuss the SAS decision and its impact on IPR proceedings.
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