PGS Geophysical AS v. Iancu, No. 16-2470 (Fed. Cir. June 7, 2018)
The Federal Circuit ruled that it has jurisdiction over pre-SAS inter partes reviews (IPRs) currently before the court, where the Patent Trial and Appeal Board (PTAB) instituted the proceeding on less than all claims and all grounds, as recently required by the Supreme Court in SAS Institute, Inc. v. Iamcu, 138 S. Ct. 1348 (2018). Moreover, the Court declined to sua sponte revive non-instituted claims and grounds, thus avoiding the need for remand back to the PTAB.
In SAS, the Supreme Court interpreted the IPR statute to require the PTAB, when instituting an IPR proceeding, to institute all challenged claims on all grounds. As the Federal Circuit noted, SAS raises “certain transition issues” for cases before the Court, which were instituted and decided under pre-SAS practice. PGS Geophysical, slip. op. at 7.
The Federal Circuit pointed to support in SAS for the equal treatment of claims and grounds for institution purposes, “interpreting the statute to require a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” Ibid. at 8. The Court further found that the existence of non-instituted claims and grounds does not deprive it of jurisdiction, finding that “final agency action” has been met. Ibid. at 9.
With respect to revival of non-instituted claims and grounds, neither PGS Geophysical nor the Director requested such relief, and the Court declined to act sua sponte. Ibid. at 11. Leaving the door open, the Court further stated, “[w]e do not rule on whether a different conclusion might be warranted in a case in hitch a party has sought SAS-based relief from us.” Ibid.