In September 2018, the Patent Office created the Precedential Opinion Panel (or “POP”) to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would guide all PTAB judges. In March 2019, the POP released its first opinion, which held that the PTAB may, in limited circumstances, join both a petitioner to a proceeding in which it is already a party and join new issues to an existing proceeding.
In the 2017 precedential decision General Plastic Co. v. Canon Kabushiki Kaisha, the PTAB established a set of seven non-exclusive factors that it will consider in exercising its discretion under 35 U.S.C. § 314(a) to deny follow-on petitions. Two recent PTAB decisions analyzing General Plastic suggest a lack of redundancy between the petitions may not be enough to justify instituting a follow-on petition. Instead, a primary consideration guiding the PTAB may be whether the petitioner could have raised the arguments in an earlier-filed petition.
While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces when it advances claim construction positions before the Board that are inconsistent with its positions in related district court proceedings.
In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recent decision says yes, in at least some circumstances. And while the facts of this case are unusual, it nevertheless demonstrates that petitioners should be cautious when relying on SAS to try to induce the PTAB to reconsider grounds that it didn’t originally find persuasive.
This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. The Court explained that its holding was compelled by a plain reading of 35 U.S.C. § 318(a), which states that the PTAB must issue a final written decision on “any patent claim challenged by the petitioner.” SAS Institute did not decide, however, whether the PTAB’s final written decisions must also address all grounds raised in a petition. The Federal Circuit has subsequently provided a clearer answer.