Federal Circuit denies en banc rehearing, IPR proceedings can be instituted for less than all of the challenged claims

Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit, dissented.

SAS Institute, Inc. v. Complementsoft, LLC,  (Fed. Cir. Nov. 7, 2016) (Before Prost, C.J., Newman, Lourie, Dyk, Moore, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, J.) (Dissenting opinion, Newman, J.)

The Federal Circuit denied appellant SAS’s petition for rehearing en banc from a decision by the Patent Trial and Appeal Board, without an explanatory opinion.

Judge Newman dissented. Without discussing the facts of the case, she undertook to review the statutory provisions for inter partes review (“IPR”) proceedings under the America Invents Act (“AIA”). According to Newman, the Court should have granted the petition, in order to correct the Patent Office position that “the final order of the [Patent Trial and Appeal] Board need not address every claim raised in the petition for review.”

The PTO created the Patent Trial and Appeal Board (“PTAB”) under the AIA, in part to hold inter partes review proceedings that achieve a final resolution of patent validity disputes by agency action instead of through litigation. The PTAB has sole discretion to decide whether to institute review as to some, but not all, of the patent claims challenged in the proceeding. This so-called “partial” or “selective” institution produces a final validity determination as to the selected claims but leaves the unselected claims “dangling.” Under the estoppel provisions of the AIA, final PTAB decisions in IPR proceedings are given preclusive effect in later district court proceedings but only with regards to claims that were instituted in the proceeding.

According to Judge Newman, a review of the statutory provisions of the AIA makes it clear that, if the PTAB decides to institute review, it should do so for all of the challenged claims, not just some of the challenged claims. The “partial institution” practice currently exercised by the PTAB “foils the legislative purpose of resolving certain patent issues in an administrative forum,” and SAS’s petition for rehearing en banc should have been granted so that the Court could correct, or at least address the issue.

The PTO’s position that IPR proceedings can be instituted for less than all of the challenged claims remains intact, at least until the Court chooses to address the issue at a later time. 



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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