On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings.

As has been widely reported, SAS reversed the PTAB’s long-standing practice of deciding institution of IPR challenges on a claim-by-claim basis. Now, the decision whether to institute an IPR is an all-or-nothing choice, either requiring the denial of the entire petition, or institution and subsequent final written decision on all claims challenged in the petition.

According to the new guidance, the panel of judges in an IPR may issue an order supplementing the institution decision when necessary to institute on all challenges raised in the petition. When such an order is issued, the panel may take further action to manage the proceeding, including, for example, permitting additional time, briefing, discovery, or oral argument, depending on the circumstances and stage of the proceeding. For example, the response deadline for a Patent Owner Response might be extended to enable the Patent Owner to address any newly instituted claims.

Once the PTAB issues an order supplementing the institution decision, the PTAB expects the parties to meet and confer and then ask the PTAB for additional briefing and any adjustments to the trial schedule. Importantly, the guidance indicates that while the PTAB may act on its own, the parties should not expect additional briefing or schedule adjustments if they do not ask for them. As is customary, a conference call with the panel may be requested to address any disputes.

SAS has the potential for enormous impact on all stages of AIA proceedings, from pre-filing considerations through appeal. Thus, the USPTO’s short one-page guidance, issued one day after SAS was decided, should likely be viewed as preliminary guidance. It is expected that the USPTO will continue to refine its approach to this case in the coming weeks and months.

The guidelines are available at this link: https://www.uspto.gov/sites/default/files/documents/guidance_on_the_impact_of_sas_on_aia_trial_proceedings_%20%28april_26%2C_2018%29.pdf.

Written by: Scott Raevsky and Kerry S. Taylor, Ph.D.