Previously Exercised Discretion Eliminated by SAS

While most remember the Cuozzo appeal as challenging the Patent Trial & Appeal Board’s (PTAB) claim construction practices, it also challenged the Board’s discretion to institute claims on grounds not presented in the IPR petition. But, the High Court deemed this issue unreachable given the appeal bar of 35 U.S.C. § 315(b). Still, the Federal Circuit has expressly endorsed the Board’s ability to modify the grounds presented in trial petitions.

Today, the Federal Circuit has made clear in Sirona Dental SystemsGMBH v. Institut Straumann AG (precedential) that the Supreme Court’s decision in SAS Institute eliminates any ability of the Board to modify a petitioner’s trial grounds.
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