Left in the wake of the Supreme Court’s SAS decision (discussed here) are a number of appeals pending before the Federal Circuit concerning Patent Trial and Appeal Board final written decisions in inter partes review (IPR) proceedings administered on a subset of claims and grounds presented in the IPR petition. While litigants before the Board scramble to reassess strategies, the Board itself has been offering guidance, including its publication on June 5 of an updated FAQ on how it will administer pending IPRs and decide petitions pending when the Court decided SAS. As for pending appeals, the Federal Circuit explained that it has jurisdiction to address appeals of PTAB final written decisions that have “SAS transition issues.” PGS Geophysical AS v. Iancu, Appeals 2016-2470, -2472, -2474, Slip Op. at 9–11 (Fed. Cir. June 7, 2018). And the court further explained that future appellants will need to request relief regarding those issues, as the court will not act sua sponte. Id. at 11–13.

WesternGeco, L.L.C., a competitor of PGS, filed three IPR petitions challenging claims in a single PGS patent directed to methods and systems for marine seismic surveying performed on the high seas to determine the structure of earth formations below the sea bed. The Board instituted proceedings on all three petitions, but reviewed only a subset of the petitioned claims and grounds. In its final written decisions, the Board ruled partly for PGS and partly for WesternGeco on the reviewed claims and grounds. Both parties appealed, but WesternGeco settled and withdrew, leaving only PGS’s appeals. The Patent Office’s Director intervened to defend the decisions. Id. at 2. As the court explained, “[i]n two stages, the Board finally disposed of all the challenges (i.e., claims and grounds) in the petitions placed before it. Some of what the Board did is now seen to be legally erroneous under SAS, but legal error does not mean lack of finality.” Id. at 10–11.

If the Board’s decisions lacked finality, then the court may not have jurisdiction to decide the appeals because of the Supreme Court’s SAS decision, “which held that the IPR statute does not permit a partial institution on an IPR petition of the sort presented here.” But both PGS and the Director advised the court it had jurisdiction to address PGS’s appeals and should do so without sua sponte remanding for the Board to rectify its error. Id. at 6–7. The court agreed, explaining the agency’s actions were sufficiently final even if erroneous because the Board’s decisions terminated the IPRs “as to all claims and all grounds, and the Board made patentability determinations that affect” PGS’s patent rights. Id. at 9 (citations omitted). The court also noted the Supreme Court similarly did not lack jurisdiction to decide SAS, and that the Board’s actions here are “analogous to a situation in which a district court, upon receipt of a two-count complaint, incorrectly dismisses one count early in the case (without prejudice to refiling in that forum or elsewhere) and proceeds to a merits judgment on the second count. Once the second count is finally resolved, there would be a final judgment in that situation, with both counts subject to appeal.” Id. at 9–10.

In concluding its jurisdictional assessment, the court noted that no party to these appeals sought SAS-based relief and that the court was not foreclosing a different conclusion in a future case in which a party requests such relief. The court “uncovered no legal authority,” however, requiring it to sua sponte treat the Board’s erroneous partial institution as a basis for refusing to review the final written decisions or to remand simply for consideration of the non-instituted claims/grounds: “the Board’s error is waivable, not one we are required to notice and act on in the absence of an appropriate request for relief on that basis.” Id. at 11. If parties appealing a final written decision in the wake of SAS want that decision to address all claims and grounds, then they will have to request as much from the court. Whether they will do so and whether the court will grant relief remain to be seen. But there is now at least one less unanswered question in SAS’s wake.