In response to the Supreme Court’s decision in SAS Inst., Inc. v. Iancu finding the PTAB’s practice of partial IPR institutions improper, the PTAB swiftly (in less than 24 hours) released guidance for pending petitions and instituted trials. The PTAB’s guidance is available here.
In sum, the guidance provides:
For pending petitions:
- If review is instituted, it will be instituted on all challenges raised in the petition.
For instituted trials:
- If trial was already instituted on all challenges raised in the petition, trial will proceed in normal course.
- If trial was instituted on only some of the challenges, the PTAB “may” issue a supplemental institution decision instituting review for all challenges raised in the petition. For such cases, the scheduling order may be modified to account for any changes, including extending the trial beyond the statutory one-year time period.
The guidance also states that the PTAB will continue to assess the impact of the SAS decision and issue further guidance if necessary.