`
`A.
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`SAS Q&As
`
`June 5, 2018
`
`
`Effect of SAS on AIA proceedings generally
`
`A1. Q: How will SAS impact PTAB’s procedure for AIA trial proceedings?
`
`A: PTAB will institute on all challenges raised in the petition or not institute at all
`(i.e., it will be a binary decision). There will be no partial institution based on claims.
`There will be no partial institution of grounds.
`
`A2. Q: How will the Board address instituted proceedings in light of SAS?
`
`A: If a Decision instituting on all challenges has issued already, the trial will proceed
`without any changes. For a Decision instituting on fewer than all challenges, the
`Board will take action to address all challenges. If a Decision denying institution has
`issued, no additional action will be necessary.
`
`A3. Q: Does the USPTO intend to change its procedure through rulemaking?
`
`A: The Office is considering revising 37 CFR §§ 42.108 and 42.208 to institute on all
`claims in a petition, as well as other rule changes that may be warranted in response
`to SAS.
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`Motorola Mobility v. Intellectual
`Ventures IPR2014-00504
`I.V. Exhibit 2043
`
`

`

`
`
`B.
`
`
`June 5, 2018
`
`
`Effect of SAS on on-going partially-instituted proceedings
`
`B1.
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`B2.
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`B3.
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`B4.
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`Q: Will the Board re-start the trial process in view of SAS on the claims/grounds
`initially denied institution, including re-starting the 12-month statutory clock?
`
`A: No. As explained below, depending on the specific facts of a case and its
`procedural posture, an order instituting on all claims and all grounds presented in
`the petition and an order for the parties to meet and confer will be entered. A panel
`may also authorize additional briefing, evidence, and a supplemental hearing, as
`well as extend procedural dates.
`
`Q: If the Board has instituted already on only some challenges raised in a petition,
`how will the Board and parties address SAS?
`
`A: In order to address SAS, the panel may:
`a. Issue an order instituting on all claims and all grounds presented in the
`petition and order the parties to meet and confer;
`b. Depending on the stage of the trial proceeding, the Board may authorize
`additional briefing, evidence, and a supplemental hearing, as well as
`extend procedural dates;
`c. Receive a joint request filed by the parties for rehearing to waive
`additional claims and/or grounds; or
`d. Receive a joint motion to limit claims and/or grounds.
`
`Q: If the proceeding has been instituted but it is before a Patent Owner has filed its
`Response, how will the Board and parties address SAS?
`
`A: In order to address SAS, the panel may:
`a. Issue an order extending the due date for the Patent Owner Response to
`allow the Patent Owner to address additional claims and/or grounds; and
`b. Adjust other procedural dates as necessary.
`
`Q: If the proceeding has been instituted and it is after the Patent Owner Response
`but it is before a Petitioner has filed its Reply, how will the Board and parties
`address SAS?
`
`A: In order to address SAS, the panel may:
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`B5.
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`B6.
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`June 5, 2018
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`a. Issue an order extending the due date for a Petitioner Reply if Patent
`Owner requests to supplement Patent Owner Response and provide
`evidence to address additional claims and/or grounds; and
`b. Adjust other procedural dates as necessary.
`
`Q: If the proceeding has been instituted and it is after the Petitioner Reply but it is
`before the Hearing, how will the Board and parties address SAS?
`
`A: In order to address SAS:
`a. Either party may request a conference call with the panel to discuss
`additional briefing and/or evidence to address additional claims and/or
`grounds;
`b. Petitioner is permitted responsive briefing but must request
`authorization before filing additional evidence;
`c. The panel may adjust other procedural dates, including the hearing date,
`as necessary; and
`d. Under certain circumstances, depending on the parties and panel’s
`availability, the hearing may proceed as scheduled with additional SAS
`issues being addressed by post-hearing briefing and/or a supplemental
`hearing.
`
`Q: If the proceeding has been instituted and it is after the Hearing but before the
`issuance of a Final Written Decision, how will the Board and parties address SAS?
`
`A: In order to address SAS:
`a. Either party may request a conference call with the panel to discuss
`additional briefing, evidence, and/or a supplemental hearing to address
`additional claims and/or grounds;
`b. The Petitioner is permitted responsive briefing and may request a
`supplemental hearing, but the Petitioner must request authorization
`before filing additional evidence; and
`c. The Board may extend the 12 month statutory deadline on a case-by-case
`basis, but extensions beyond the statutory deadline are not automatic.
`
`B7.
`
`
`Q: Are there circumstances in which the Board would split the proceeding and
`issue a Final Written Decision on the claims that were originally in the proceeding
`and then set a separate schedule for a decision on the additional claims and/or
`grounds added as a result of SAS?
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`
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`June 5, 2018
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`B9.
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`B8.
`
`
`A: No. The panel will not enter separate decisions; however, the Board may extend
`the statutory deadline if necessary to address the added claims and/or grounds.
`
`Q: How will the Board determine when to extend the statutory deadline for a Final
`Written Decision?
`
`A: After the parties have conferred, the panel will consider the stage of the
`proceeding, the parties’ requests for additional briefing, and time needed by the
`parties and the panel to address additional claims and/or grounds in a proceeding.
`Based on the panel’s assessment of the parties’ requests and the time remaining
`before the statutory deadline, the panel will decide if an extension is warranted and
`will make a recommendation to the Chief Judge.
`
`Q: If the proceeding has been instituted and the Final Written Decision has already
`issued, but the deadline for a Request for Rehearing has not passed, how will the
`Board and the parties address SAS?
`
`A: Either party can file a rehearing request to raise SAS-issues regarding all claims
`and/or all grounds challenged in the petition. The panel may extend the rehearing
`deadline if a party requests such an extension and the panel determines it is needed.
`
`B10. Q: If the Final Written Decision has already issued and the deadline for a Request
`for Rehearing has passed but not the deadline to appeal the case to the Federal
`Circuit, how will the Board and the parties address SAS?
`
`A: Either party may request a conference call with the panel to discuss additional
`briefing and/or evidence to address additional claims and/or grounds. The panel
`may extend or waive the rehearing deadline.
`
`B11. Q: If a Final Written Decision has issued in a proceeding and the case is on appeal
`to the Federal Circuit, will the Board reopen the case to address SAS?
`
`A: No. The Board cannot reopen a case on appeal or after the trial certificate has
`issued.
`
`B12. Q: If the parties cannot agree to waive additional claims, is there anything a party
`can do on its own to limit the scope of the proceeding?
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`A: Yes.
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`June 5, 2018
`
`
`a. The Patent Owner can disclaim claims at any time.
`b. The Petitioner can request adverse judgment on claims and/or grounds at
`any time.
`
`
`B13. Q: Will the Board relieve Patent Owner from responding to frivolous grounds given
`a panel will institute on all challenges or none?
`
`A: The panel will assess the merits of the Petitioner’s challenges in view of the
`complete record as necessary to decide the patentability of claims in the final
`written decision. Nevertheless, depending on the case, it may be in the Patent
`Owner’s interest to point out deficiencies in the Petitioner’s case.
`
`
`B14. Q: If the Patent Owner does not take the opportunity to supplement its Response,
`will the Petitioner be allowed to say anything in response to the newly instituted
`claims and/or grounds given that the Board may have previously found no
`reasonable likelihood as to those claims and/or grounds?
`
`A: Yes, the Petitioner generally will receive a limited opportunity for supplemental
`briefing, to respond to the Institution Decision, regardless of whether Patent Owner
`says anything about the claims or grounds added to the proceeding.
`
`
`B15. Q: If the Board found no reasonable likelihood as to certain claims and/or grounds,
`then why is the Board allowing additional briefing on them?
`
`A: Because a panel’s determination is preliminary, the Petitioner may be able to
`direct the panel to information in the record that it overlooked or misunderstood.
`The panel will consider whether the Petitioner’s briefing is outside the scope of a
`permissible rebuttal to the Institution Decision.
`
`
`B16. Q: Will a party be able to retake a deposition to address claims and/or grounds
`that were originally denied?
`
`A: The Board envisions that, under certain circumstances, a witness may need to be
`deposed again for the limited purpose of addressing claims and/or grounds that
`have now been added to the proceeding. The Board expects the parties to meet and
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`confer to resolve discovery issues arising from supplemental institution of claims
`and/or grounds.
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`June 5, 2018
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`
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`June 5, 2018
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`
`C1.
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`C2.
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`C. Effect of SAS on instituted challenges previously denied for statutory reasons
`
`Q: Will the Board vacate its prior institution decision if including all claims and/or
`grounds would bring in challenges that were initially denied under 35 USC
`§ 325(d)?
`
`A: No, at this time the Board does not anticipate vacating prior institution decisions
`under these circumstances. Although challenges subjected to § 325(d) will be
`addressed in the Final Written Decision, panels will take into account evidence that
`the same or substantially the same art or argument was previously before the Office
`and give such evidence due weight in addressing the challenge.
`
`Q: Will the Board vacate its prior institution decision if including all claims and/or
`grounds would bring in claims that were initially denied because the Petitioner did
`not provide a construction under 35 USC § 112(f)?
`
`A: No, at this time the Board does not anticipate vacating prior institution decisions
`under these circumstances. Depending on the circumstances, panels may allow
`parties additional briefing to (1) provide a sufficient construction, (2) address how
`the panel should proceed to apply the prior art to the claim limitation even if
`insufficient structure has been identified, and (3) address how the panel should
`reach a determination with respect to that claim in the Final Written Decision.
`
`Q: How will the Board address institution of additional claims, where those claims
`were originally denied institution on the basis of estoppel under section 315(e)?
`
`A: The panel will add such claims to the proceeding. However, section 315(e) states
`that a petitioner may not “maintain a proceeding” as to estopped claims. Therefore,
`even though such claims are technically in the proceeding, the panel will decide such
`claims in favor of the Patent Owner. This may not preclude a different petitioner
`from challenging the same claims.
`
`C3.
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`
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`June 5, 2018
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`
`D. Effect of SAS on future challenges that could be denied for statutory reasons
`
`D1. Q: In view of the Office’s policy to institute on all challenges or none, how will the
`Board handle 35 USC § 325(d) in situations where only some of the challenges fall
`within its scope?
`
`A: The panel will evaluate the challenges and determine whether § 325(d) is
`sufficiently implicated that its statutory purpose would be undermined by instituting
`on all challenges. If so, the panel will evaluate whether the entire petition should be
`denied.
`
`D2. Q: In view of the Office’s policy to institute on all challenges or none, how will the
`Board handle petitions that contain voluminous or excessive grounds for
`institution in light of the Office’s policy of instituting on all claims?
`
`A: The panel will evaluate the challenges and determine whether, in the interests of
`efficient administration of the Office and integrity of the patent system (see 35 USC
`§ 316(b)), the entire petition should be denied under 35 USC § 314(a).
`
`D3. Q: Will the Board institute a petition based on the percentage of claims and
`grounds that meet the reasonable likelihood standard, e.g., 50%?
`
`A: No. The Board does not contemplate a fixed threshold for a sufficient number of
`challenges for which it will institute. Instead, the panel will evaluate the challenges
`and determine whether, in the interests of efficient administration of the Office and
`integrity of the patent system (see 35 USC § 316(b)), the entire petition should be
`denied under 35 USC § 314(a).
`
`D4. Q: How will the Board handle petitions where, prior to SAS, some claims would
`have been denied because the Petitioner does not provide a construction under 35
`USC § 112(f)?
`
`A: The panel will evaluate the challenges and determine whether, in the interests of
`efficient administration of the Office and integrity of the patent system (see 35 USC
`§ 316(b)), the entire petition should be denied under 35 USC § 314(a).
`
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`E.
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`E1.
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`June 5, 2018
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`
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`Content of institution decisions post-SAS
`
`Q: Will the Board change how it does institution decisions as a result of SAS? For
`example, will the Board’s institution decisions address one claim and one ground?
`
`A: The Board will endeavor to provide details to the parties. For example, a panel
`generally will try to provide information responding to the Patent Owner’s
`arguments (assuming the Patent Owner filed a Preliminary Response) to help the
`parties understand the panel’s preliminary view of the merits of the parties’
`arguments.
`
`
`Q: Will the Board’s institution decisions continue to find when challenges do not
`meet the reasonable likelihood standard?
`
`A: To the extent a panel finds certain challenges do not meet the reasonable
`likelihood standard at the institution stage in view of the parties’ arguments, the
`panel will indicate its view in the decision to institute, even if the result is to institute
`on all challenges.
`
`Q: If SAS requires only 1 claim and 1 ground to be sufficient for institution of all
`challenges, isn’t anything else the Board says at the time of institution akin to an
`advisory opinion?
`
`A: The Board is not prohibited from providing its preliminary assessment regarding
`the Petitioner’s challenges. A panel’s view of a patent owner’s arguments at the
`time of institution may provide valuable insight to the parties to put them on notice
`as to the panel’s view of the arguments at that stage, so that they have a full and fair
`opportunity to develop a record for the trial portion of the proceeding. This could
`help streamline proceedings and help the parties and the panel to focus on key
`disputes.
`
`Q: How can the Board provide its view that the Petitioner has not met the
`reasonable likelihood standard at institution and then reverse itself and find
`claims unpatentable in the final written decision based on a preponderance of the
`evidence?
`
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`E2.
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`E3.
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`E4.
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`June 5, 2018
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`A: The Board’s institution decision is a preliminary finding based on an incomplete
`record and before the parties have had a full opportunity to be heard. Panels
`frequently institute based on a reasonable likelihood standard and then ultimately
`find the claims not unpatentable based on a preponderance of the evidence, once
`the complete record has been developed. Therefore, the opposite is also possible.
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`June 5, 2018
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`F. For additional questions about SAS
`
`F1.
`
`Q: If a party has additional questions regarding the implications of SAS for a
`specific trial, what should the party do?
`
`A: Submit case-specific questions (e.g., request a call with the Board) via email to
`trials@uspto.gov
`
`Q: If a member of the public has a general question regarding SAS, but does not
`have a case pending before the Board, what should the party do?
`
`A: Submit general SAS related questions via email to trials@uspto.gov
`
`F2.
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