The PTAB’s New “Binary Decision” to Institute in AIA Trials—All Claims and All Grounds of Invalidity, or None at All

Just a few weeks ago, the U.S. Supreme Court issued SAS Institute Inc. v. Iancu, holding that that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim challenged by an IPR petitioner. Two days later, the PTAB issued written guidance explaining that it will, following SAS, “institute as to all claims or none. At this time, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”

On April 30, 2018, the PTAB held a webinar, entitled Chat with the Chief on SAS, providing additional clarification regarding the impact of SAS.

During that webinar, the PTAB explained its “binary decision” to institute—the PTAB will institute on all “challenges” raised in the petition or not institute at all. Regarding AIA trials already in progress, the PTAB explained that to the extent the prior institution decision already instituted on all challenges, there would need be no change. Similarly, where the PTAB previously declined to institute (finding that no challenges warranted a trial), no additional action would be necessary.

The webinar also explained what was meant by “challenges” in the prior issued guidance. That is, not only would the PTAB cease its “partial institution” practice of instituting on fewer than all claims; it would also cease instituting on fewer than all grounds of invalidity in a challenge. Though the PTAB’s prior practice of instituting on fewer than all grounds of invalidity did not seem to be directly implicated by the holding in SAS (which concerned the PTAB’s practice of instituting on fewer than all claims), the PTAB is nevertheless adopting this as part of its “binary decision” for now.

The webinar also included a discussion of how the PTAB intends to deal with pending trials affected by SAS. In particular, the PTAB notes that additional briefing and/or evidence may be required depending on “the stage of the trial processing.” This includes AIA trials in which a final written decision has issued, but before the CAFC has taken over jurisdiction on appeal. The PTAB may make these changes in specific trials of its own accord, or at the request of the parties (including through requests for rehearing).