As we reported earlier this week, the Supreme Court held in SAS Institute Inc. v. Iancu that when the PTAB institutes an IPR, it must decide the patentability of all challenged claims. The U.S. Patent and Trademark Office yesterday issued guidance on the impact of SAS. The guidance explains that going forward: “As required by the decision, the PTAB will institute as to all claims or none. At this time, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”
For pending petitions on which the PTAB has already “instituted trial on all of the challenges raised in the petition, the panel will continue with the proceeding in the normal course.” For pending petitions on which partial institution was granted, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.” Further, the parties are encouraged to work together on schedule changes necessitated by supplemental institution on additional grounds.