In a recent final written decision, the Patent Trial and Appeal
Board (PTAB) has determined that it was not unlawful for it to
modify its institution decision following the SAS Supreme
Court case.
In the PTAB proceeding, Petitioners Cisco Systems and Oclaro
filed a petition for inter partes review (IPR) of nearly
all claims of Patent Owner Oyster Optics’ patent directed to
a secure fiber optic telecommunications system—U.S. Patent
No. 6,594,055 (the “’055 patent”). At the outset,
Petitioners sought a review of Claims 1-13, 15-23 and 27 of the
’055 patent. The PTAB, however, instituted IPR on only a
subset of the challenged claims, namely Claims 17-23 and 27, and
only on some of the grounds that Petitioners asserted against Claim
27. Following institution, the Supreme Court ruled in
SAS that “the Patent Office must ‘issue a
final written decision with respect to the patentability of
any patent claim challenged by the petitioner.’ 35
U.S.C. § 318(a). In this context,
