CAFC Has Jurisdiction Where SAS Relief Waived
The impact of the Supreme Court’s decision in SAS Institute has been immediate and far-reaching. As explained last week, the courts have quickly realized the import of this Patent Trial & Appeal Board (PTAB) practice change on motions to stay. As for the PTAB itself, the agency is currently grappling with the unexpected expansion of roughly 50% of its current caseload. With a significant number of PTAB trial appeals on the docket of the Federal Circuit, questions remained as to how the Court might resolve the SAS questions in the cases pending before it.
Today, the court issued a precedential decision in PGS Geophysical AS v. Iancu in which the Court found outstanding SAS issues did not deprive it of appellate jurisdiction.
Setting aside the jurisdictional issue for a moment, the Court also addressed an oft-debated reading of SAS with respect to non-instituted grounds. That is, whether the holding in SAS extends to partial institution of grounds (i.e., where all challenged claims were subject to trial, but some grounds were not). This question is the subject of a number of pending rehearing requests before the PTAB.
The Court explained (here):
Equal treatment of claims and grounds for institution purposes has pervasive support in SAS. Although 35 U.S.C. § 318(a), the primary statutory ground of decision, speaks only of deciding all challenged and added “claim[s],” the Supreme Court spoke more broadly when considering other aspects of the statutory regime, and it did so repeatedly. The Court wrote that “the petitioner is master of its complaint and normally entitled to judgment on all of the claims it raises.” SAS, 138 S. Ct. at 1355. It said that § 312 contemplates a review “guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based,’” and it added that the Director does not “get to define the contours of the proceeding.” Id. The Court also said that § 314’s language “indicates a binary choice—either institute review or don’t.” Id. It further reasoned that “[n]othing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design” and that “Congress didn’t choose to pursue” a statute that “allows the Director to institute proceedings on a claim-by-claim and ground-by ground basis” as in ex parte reexamination. Id. at 1356 (emphasis in original). And the Court concluded that “the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation,” id., and the “petitioner’s contentions . . .define the scope of the litigation all the way from institution through to conclusion,” id. at 1357
As such, while the PTAB has made clear that it was treating SAS as extending to grounds “for the time being,” today’s decision would appear to extend that treatment permanently.
Turning back now to the jurisdictional issue, the concern was that since the Court’s jurisdiction is based upon the existence of a Final Written Decision (FWD) of the PTAB, was jurisdiction improper where the FWD is incomplete? That is, is an FWD and FWD if it is infected with SAS issues?
In this regard, the Court explained:
The standard for “final agency action” under the Administrative Procedure Act (APA), 5 U.S.C. § 704, is met. Generally, agency action is final when the agency’s decision-making process is complete and the action determines legal “rights or obligations” or otherwise gives rise to “legal consequences.” Here, the Board issued an institution decision and a final written decision in each IPR. In each matter, the Board’s decisions are final, even if erroneous, because they “terminated the IPR proceeding” as to all claims and all grounds . . . We note that, in SAS, the Court reviewed the Board’s decisions under the APA, 5 U.S.C. § 706(2)(A) and (C), see 138 S. Ct. at 1359, and despite concluding that the Board erred in its institution decision by denying review of some challenged claims, the Court nowhere suggested either the absence of a “final agency action” or the absence of jurisdiction on this court’s part.
(internal citations omitted)
With respect to the applicability of this ruling to other pending PTAB appeals with SAS issues, the court explained:
In this case, no party seeks SAS-based relief. We do not rule on whether a different conclusion might be warranted in a case in which a party has sought SAS based relief from us.
In cases where parties have motioned for remand back to the PTAB (SAS-relief), to date, the Court has obliged.