The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note is that the Board seemingly intends to consider revoking some partial institution decisions to retroactively de-institute pending trials.
Many listener questions sought to clarify the impact on prior institution decisions in pending trials. Several addressed the apparent daylight between the memo’s stated intent to consider “all challenges” in instituted trials going forward, and the less-concrete statement that “for pending trials in which a panel has instituted trial only on some of the challenges . . ., the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.”
The Board explained that in many cases it will expand institution to include all challenges raised in the petition, but used “may” in the guidance memo to reserve discretion to address two other possible scenarios. First, the Parties may agree to proceed on only the grounds instituted in the original institution decision, rendering unnecessary a supplemental istitution decision.
Second, the Board may decide that it would not have instituted at all had it originally been forced to consider all challenges raised in the petition. The example offered by the Board for this second scenario is that a petition might have one strong ground and nineteen other grounds that are weak and/or otherwise barred, suggesting that retroactively de-instituting should be rare and only when the partially instituted grounds are greatly outweighed by grounds not originally instituted.
One question that went un-asked is whether the Board has statutory authority for a “take back” on its own prior institution decisions, especially if no request for rehearing is pending. Section 314(b) mandates that the Board “shall determine whether to institute an inter partes review . . . within 3 months after—(1) receiving a preliminary response to the petition . . .; or (2) if no such preliminary response is filed, the last date on which such response may be filed.” And, finding no statutory authority for partial institution, the Supreme Court in SAS required the Board—once a trial is instituted—to rule on the patentability of all challenged claims. Expanding an institution decision to include all challenges is plainly consistent with the Supreme Court’s requirement, but it remains to be seen where the Board finds support for authority to revoke its own institution decisions sua sponte.
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