Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2016-00921,
Mitchell G. Stockwell, Kilpatrick Townsend & Stockton
LLP, Atlanta, GA, for appellant. Also represented by Vaibhav
P. Kadaba, Michael T. Morlock, Tiffany L. Williams.
Christopher J. Renk, Banner & Witcoff, Ltd., Chicago, IL,
for appellee. Also represented by Aaron Patrick Bowling,
Michael Joseph Harris.
Moore, Wallach, and Taranto, Circuit Judges.
light of the Supreme Court's recent decision in SAS
Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018), Adidas
AG ("Adidas") moves to remand this appeal to the
Patent Trial and Appeal Board for additional proceedings.
Nike, Inc. opposes. We grant the motion and remand.
owns U.S. Patent Nos. 7, 814, 598 ("the '598
patent") and 8, 266, 749 ("the '749
patent"). Adidas petitioned the Director of the United
States Patent and Trademark Office to institute inter partes
review of claims 1-13 of the '598 patent and claims 1-9,
11-19, and 21 of the '749 patent. Adidas's petitions
raised two grounds in challenging each of those claims:
ground 1 argued that each claim would have been obvious based
on the Reed and Nishida references and ground 2 argued that
each claim would have been obvious based on the Castello,
Fujiwara, and Nishida references.
Board, acting on behalf of the Director, granted Adidas's
petitions and instituted inter partes review of all of the
challenged claims. However, the Board limited its review
proceedings to ground 1. On October 19, 2017, the Board
issued its final written decisions, holding that Adidas had
not met its burden of demonstrating any of the claims would
have been obvious based on ground 1. The Board never
addressed the merits of the combination of references argued
in ground 2 or suggested that its conclusions as to ground 1
would be dispositive as to ground 2 which was based on a
different combination of references. Adidas timely appealed.
After the Supreme Court issued its decision in SAS,
Adidas promptly moved to remand for the Board to consider
argues that remand is appropriate under SAS for the
Board to issue final written decisions addressing ground 2.
Adidas contends that "[t]he Supreme Court's
reasoning in SAS-that the Petition controls the
scope of the proceeding-likewise requires that the Board
institute on all grounds raised in the Petition." Adidas
argues that the Patent Office recently issued public guidance
indicating that, in light of SAS, if a trial is
instituted, the Board will institute review on all challenges
raised in the petitions. See Guidance on the Impact of
SAS on AIA Trial Proceedings (Apr. 26, 2018). Nike
responds that SAS is "irrelevant to the present
appeal" because SAS requires only institution
as to all claims, as was done here, and that Adidas has
waived any "all grounds" argument by failing to
present it to the Board.
that remand is appropriate here. The Court explained in
SAS that in establishing inter partes review,
Congress set forth "a process in which it's the
petitioner, not the Director, who gets to define the contours
of the proceeding." 138 S.Ct. at 1355. The Court held
that if the Director institutes review proceedings, the
review must proceed "in accordance with or in
conformance to the petition," id. at 1356
(internal quotations omitted), a "petition describing
'each claim challenged' and 'the grounds on which
the challenge to each claim is based, '"
id. at 1355 (quoting 35 U.S.C. § 312(a)(3)).
"Nothing suggests the Director enjoys a license to
depart from the petition and institute a different
inter partes review of his own design." Id. at
1356 (emphasis in original). The Court found that "the
petitioner's petition, not the Director's discretion,
is supposed to guide the life of the litigation,"
id., and "that the petitioner's
contentions, not the Director's discretion, define the
scope of the litigation all the way from institution through
to conclusion," id. at 1357.
several cases since SAS, we have found it
appropriate to remand to the Board to consider arguments
addressed to non-instituted claims and found waiver
inapplicable to a prompt remand request due to the
significant change in the law. See, e.g., Baker
Hughes Oilfield v. Smith Int'l, Inc., Nos.
2018-1754, -1755, slip op. at 4-5 (Fed. Cir. May 30, 2018);
Polaris Indus. Inc. v. Arctic Cat, Inc., Nos.
2017-1870, 2017-1871, slip op. at 3-4 (Fed. Cir. May 30,
2018); Ulthera, Inc. v. DermaFocus LLC, No.
2018-1542, slip op. at 3 (Fed. Cir. May 25, 2018). We see no
reason to treat this case differently. As we recently
explained in PGS Geophysical AS v. Iancu, F.3d, slip
op. at 7 (Fed. Cir. June 7, 2018), "[e]qual treatment of
claims and grounds for institution purposes has pervasive
support in SAS." Adidas promptly requested a
remand for consideration of the non-instituted grounds. In
this case, we think it appropriate to grant that request, as
in the above-cited cases, without first deciding the appeal
of the claims and grounds already before us.
It Is Ordered That:
motion to remand is granted. The Board is directed to
promptly issue a final written decision as to all ...