Tuesday, July 03, 2018

Adidas gets remand under SAS in Nike case: the petitioner, not the Director gets to define the contours of the IPR proceeding

From the CAFC:

We hold that remand is appropriate here. The Court
explained in SAS that in establishing inter partes review,
Congress set forth “a process in which it’s the petitioner,
not the Director, who gets to define the contours of the
proceeding.” 138 S. Ct. at 1355. The Court held that if
the Director institutes review proceedings, the review
must proceed “in accordance with or in conformance to the
petition,” id. at 1356 (internal quotations omitted), a
“petition describing ‘each claim challenged’ and ‘the
grounds on which the challenge to each claim is based,’”
id. at 1355 (quoting 35 U.S.C. § 312(a)(3)). “Nothing
suggests the Director enjoys a license to depart from the
petition and institute a different inter partes review of his
own design.” Id. at 1356 (emphasis in original). The
Court found that “the petitioner’s petition, not the Director’s
discretion, is supposed to guide the life of the litigation,”
id., and “that the petitioner’s contentions, not the
Director’s discretion, define the scope of the litigation all
the way from institution through to conclusion,” id. at


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