August 10, 2018Newsletter

This Week at the Board - August 10, 2018

Federal Circuit Rules That All Grounds of Petition Must be Addressed In View Of SAS

In Adidas AG, v. Nike, Inc., the Fed. Circuit granted Adidas’s motion to remand an appeal to the Board in view of the Supreme Court’s SAS decision.  Adidas challenged two Nike patents in an IPR, raising the same two grounds of invalidity based on obviousness for each patent.  The Board granted Adidas’s petition and instituted IPR of all the challenged claims on ground one, but did not consider the second ground.  The Board issued a final written decision on ground one, and never addressed the merits of ground two.  Adidas appealed the Board’s decision, and after the Supreme Court issued its decision in SAS, moved to remand for the Board to consider ground two.  Nike argued that “SAS requires only institution as to all claims.”  The Federal Circuit disagreed and held, quoting SAS, that the remand was appropriate because the petitioner, not the Director, “gets to define the contours of the proceeding.” While SAS held that the Board must decide the patentability of all claims challenged in the petition, it appears from this decision that the final written decision needs to address all grounds raised in the petition as well, not just all claims.

A link to the decision is found here.


Board Grants Request For Rehearing To Address Non-Instituted Grounds In View Of SAS

In IPR2017-00028, the Board recently denied a petitioner’s request for rehearing with respect to grounds that were instituted, but granted rehearing with respect to non-instituted grounds.  The Board determined that it was appropriate, in view of SAS as well as Office policy concerning the implementation of SAS reflected in the April 26, 2018 “Guidance on the Impact of SAS on AIA Trial Proceedings” (“Guidance”) to grant the rehearing, despite patent owner’s argument that SAS does not require institution of all grounds set forth in the petition.  The Board noted that the Federal Circuit has recently embraced the approach set forth in the Guidance.  The Board granted additional briefing and evidence to address the newly instituted grounds.    

A link to the decision is found here.


Federal Circuit Finds That Petitioner Lacks Standing

In JTEKT Corporation v. GKN Automotive Ltd., the Federal Circuit found that the petitioner lacked standing.  The Federal Circuit noted that while the petitioner had provided declarations in support of its position that it had standing, the petitioner had not actually demonstrated that its planned product would create a “substantial risk” of infringing the claims of the patent at issue.  While the petitioner and patent owner were competitors, the petitioner had acknowledged that its product was still in development and was not complete.  The Federal Circuit noted that in general petitioners do not need to concede infringement to have standing, but must at least demonstrate a concrete and substantial risk of infringement or demonstrate that it is likely the product will lead to claims of infringement so as to have standing.

A link to the decision is found here.

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