When SCOTUS Said No Partial Institution, It Meant All Challenged Grounds

In light of the Supreme Court of the United States decision in SAS Institute v. Iancu ( IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board (PTAB), finding that institution decisions must institute not only on all challenged claims, but also on all challenged grounds. Adidas AG v. Nike, Inc., Case Nos. 18-1180, -1181 (Fed. Cir. July 2, 2018) (Moore, J).

Adidas sought inter partes review (IPR) of two of Nike's patents, arguing that (1) each challenged claim would have been obvious based on the Reed and Nishida references, and (2) each claim would have been obvious based on the Castello, Fujiwara and Nishida references. The PTAB instituted the IPR but limited its institution to the first asserted grounds of invalidity. In its the final written decision, the PTAB held that Adidas failed to carry its burden with respect to the first asserted ground, but never addressed the petitioner's