After SAS: A Transformation of Post-Grant Practice

//After SAS: A Transformation of Post-Grant Practice

After SAS: A Transformation of Post-Grant Practice

After SAS: A Transformation of Post-Grant Practice

SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

SAS held that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision. The Supreme Court’s opinion left many aspects of the implementation of this change to the PTAB’s discretion. Our panel includes a former Lead Administrative Patent Judge who just returned to private practice last fall, a leading practitioner before the PTAB who also specializes in appeals of PTAB decisions to the Federal Circuit, and a veteran patent litigator who has been involved in many parallel proceedings at the PTAB and in district court. They will analyze and discuss:

The implementation decisions that have already been decided and announced by the PTAB.

  • What the changes mean for cases instituted before SAS that are now pending before the PTAB and how both petitioners and patent owners should respond to the “do over.”
  • How should strategy change for challengers considering filing a fresh petition for an IPR and for the patent owner in its preliminary response and throughout the trial?
  • With respect to hundreds of appeals from the PTAB that are now pending at the Federal Circuit that were instituted on only a subset of the petitioner’s challenged claims: Should petitioners file a motion to vacate the appeal and remand the case back to the PTAB? What are the Federal Circuit’s options?
  • What will be the impact on parallel district court litigation, the district court’s decision to stay the case pending the PTAB Final Written Decision, and on estoppel of challenged claims?


  • Mitchell Stockwell, Kilpatrick Townsend & Stockton, LLP
  • Trenton Ward, Finnegan, Henderson,Farabow, Garrett & Dunner, LLP
  • Jon Wright, Sterne, Kessler, Goldstein & Fox PLLC