May 25, 2018Newsletter

This Week at the Board - May 25, 2018

PTAB Modifies Institution Decision in View SAS

The Board recently stayed the deadline for the Patent Owner’s Response and held a conference with the parties to discuss the impact of the Supreme Court’s determination in SAS Institute that a decision to institute under 35 U.S.C. § 314 may not institute review on less than all claims challenged in the petition. The Board determined that it would modify the Institution Decision to include on all of the challenged claims and all of the grounds presented in the Petition. This included a § 103(a) combination that the Board previously denied because the primary reference was extensively considered during prosecution. The Parties were directed to meet and confer to determine whether an agreement can be reached to withdraw the newly allowed §103(a) challenge. In a dissenting opinion, one member of the panel argued that in view of the previous findings, the Board should exercise their discretion to dismiss the entire proceeding.

A link to the decision is found here.


PTAB Excuses Late Filing Of Request For Rehearing

The Board recently excused the late filing of a request for rehearing, finding that the Petitioner’s lateness was understandable given the recent SAS holding.  The Board had previously denied institution of some of the claims and grounds raised in the IPR.  The Board issued a final written decision.  After the final written decision, and after a previous request for rehearing, the U.S. Supreme Court held that a decision to institute may not institute on less than all claims challenged in the petition.  Shortly thereafter, and prior to the deadline for filing an appeal, the Petitioner therefore requested a conference call with the Board, and asked the Board for permission to file a late request for rehearing.  The Board granted the request, and also allowed the Patent Owner to file an opposition.

A link to the decision is found here.

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