The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will institute as to all claims or none” and, when granting institution, “will institute on all challenges raised in the petition.” The wording suggests that “all challenges” refers to all grounds on which claims are challenged, rather than merely all challenged claims.
For pending trials in which only a subset of proposed grounds were originally instituted, panels of the Board may also supplement the institution decision to institute on all challenges raised in the petition.
Panels may also order “additional time, briefing, discovery, and/or oral argument” in affected cases, “depending on various circumstances and the stage of the proceeding.” Cases near the 12-month statutory deadline for a final decision “may be extended, on a case-by-case basis, if required to afford all parties a full and fair opportunity to be heard.”
Parties are directed to confer, after receiving an order supplementing the institution decision, on the need for additional briefing and changes to the schedule. Parties should then contact the Board with proposed adjustments. Without specific requests, the Board might not order adjustments, although in some cases the Board may act sua sponte.
The Board will host a “Chat with the Chief” webinar on Monday, April 30, 2018 from 12:00 to 1:00 p.m. ET to discuss the impacts on AIA trials and answer questions.