PublishedJune 7, 2018

CAFC Determines No Requirement To Reopen Non-Instituted Claims Post-SAS

While the Supreme Court continues to consider WesternGeco, that’s not the only oil services patent case to read up on.[1. In fact, it’s been a heavy oil term at the Court—Oil States was also about an oil services patent.]  A little over a month ago, the Supreme Court’s SAS opinion determined that the PTAB can’t pick and choose which claims to consider in an inter partes review (IPR). Today, the Federal Circuit released its opinion in PGS Geophysical v. Iancu, covering how they will handle post-SAS appeals of pre-SAS IPRs that were instituted on only some claims.


PGS owns a patent on certain techniques for marine seismic surveying.  

In November 2014, WesternGeco[2. Yes, the same WesternGeco as in the Supreme Court case.] challenged the validity of PGS’s patent at the Patent Trial and Appeal Board (PTAB).  The PTAB instituted IPR on some, but not all, of the PGS patent’s claims. WesternGeco settled out of the IPR, but the PTAB continued the IPR.[3. This ability of the PTAB to continue an IPR even when a petitioner drops out is one of the major reasons that the Saint Regis Mohawk Tribe should not receive tribal immunity from IPR, an issue that was argued at the Federal Circuit earlier this week.] In June 2016, the PTAB invalidated some of the claims on which it had instituted the IPR.

PGS appealed the PTAB’s final decision to the Federal Circuit, and the case was argued in April of 2018, a week after the SAS opinion was handed down.

Faced with the question of whether to reopen claims where institution was denied, the Federal Circuit determined that there was no reason (particularly where no party requested it) to reopen those claims, and that it was permissible to deal with only the claims that the PTAB actually decided.

Impacts of PGS Geophysical

PGS Geophysical minimizes the damage that will be felt in cases that started before and will end after SAS.  At least if no party requests it, the Federal Circuit will neither reopen nor require the PTAB to reopen proceedings on non-instituted claims.

Future cases won’t be so lucky.  SAS is likely to have negative impacts long-term, forcing parties to expend resources debating claims that don’t even meet the threshold likelihood of invalidity.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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