In summary, the Supreme Court in SAS held 5-4 that all claims must be instituted, and partial institution was not constitutional. The Board has gone a step further, and is considering this to cover all claims and all grounds. This has started a firestorm of Board orders and Board calls for cases as far along as days before final written decision, and some even after final written decision that have not been appealed. From a polling of PTAB practitioners, it appears the stage of the case dictates the Board’s order.

If the case is instituted, but not at oral hearing, the Board is generally posting a supplemental institution decision sweeping in all claims and grounds. Then the parties need to decide if additional briefing is desired, and if so, what on timeline and format. A Board call is expected to take place no more than a week from the supplemental institution decision.

If the case is post oral hearing, the Board is requesting the parties jointly agree whether the non instituted issues should be brought back in or withdrawn. And if brought back in and briefing is desired, what timeline and format is requested. One note here, if the patent owner waives further briefing, petitioner can file a quasi-rehearing request as to non-instituted grounds for the Board’s consideration. So far, the Board has extended the FWD date fox six proceedings, all authorized by the Chief Judge.

Most of the FWDs issued since SAS were already SAS compliant. Ones that were not received Orders suggesting a rehearing if they wanted to brief the newly instituted claims/grounds, or noted that the SAS arguments were waived at oral hearing.

In most cases, even if the non instituted issues are swept into the trial, the Board is not reopening discovery, but rather just allowing further briefing. But again, even that is somewhat inconsistent based on the issues in each case.

Finally, it appears the Federal Circuit is also polling the parties and determining if they might want a remand to have non instituted issues swept into the proceeding.

This article appeared in the May 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.