894 F.3d 1256
Fed. Cir.2018Background
- Nike owns U.S. Patents 7,814,598 and 8,266,749; Adidas petitioned for inter partes review (IPR) of multiple claims in both patents.
- Adidas’s IPR petitions presented two distinct obviousness grounds for each challenged claim: Ground 1 (Reed + Nishida) and Ground 2 (Castello + Fujiwara + Nishida).
- The Patent Trial and Appeal Board (PTAB), acting for the Director, instituted IPR on all challenged claims but limited the trial to Ground 1 only.
- The Board issued final written decisions finding Adidas failed to prove obviousness under Ground 1 and did not address Ground 2.
- After the Supreme Court decided SAS Institute v. Iancu, Adidas moved to remand, arguing SAS requires the Board to institute and decide all grounds raised in the petition; Nike opposed, arguing SAS was inapplicable and Adidas waived the issue.
- The Federal Circuit granted Adidas’s remand motion and ordered the Board to issue final written decisions on all grounds raised in the petitions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether SAS requires the PTAB to institute and decide all petitioned grounds | Adidas: SAS means the petition, including all grounds, controls scope; Board must institute/decide all grounds raised | Nike: SAS only requires institution as to claims; Board’s limitation to one ground was permissible; Adidas waived all-grounds claim | Court: SAS supports remand; petition defines scope and remand to decide non-instituted grounds is appropriate |
| Whether Adidas’s failure to press the all-grounds argument below waived remand | Adidas: Prompt remand request after SAS; significant change in law | Nike: Adidas waived the argument by not presenting it to the Board | Court: Waiver inapplicable given the significant intervening change in law; remand allowed |
| Appropriate remedy when Board institutes on some but not all petitioned grounds | Adidas: Remand for the Board to issue final decisions on non-instituted grounds | Nike: Adjudicate appeal on instituted ground only; no remand | Court: Remand ordered; Board directed to promptly issue final written decisions on all petitioned grounds |
| Allocation of costs on remand | Adidas: (implicit) no special cost request | Nike: (implicit) no special cost request | Court: Each side shall bear its own costs |
Key Cases Cited
- SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (holding the scope of instituted IPR must conform to the petition; petitioner’s contentions, not the Director’s discretion, define the proceeding)