PGS Geophysical: Partial Institution and Remand

by Dennis Crouch

PGS Geophysical AS v. Iancu, Attractiveness No. 16-2470 (Fed. Cir. June 7, 2018) (PGS I) (precedential)
PGS Geophysical AS v. Iancu, Attractiveness No. 17-1582 (Fed. Cir. June 18, 2018) (PGS II) (non-precedential)

Our timeline for theses appeals in all probability started with WesternGeco’s infringement lawsuit versus its Norwegian competitor PGS. In the S.D.Tex. lawsuit, PGS counterclaimed alleging infringement of its U.S. Patent Nos. 6,906,981 and 6,026,059.  WesternGeco then petitioned the PTO to begin Inter Partes Critique Proceedings versus these patents. Pleased to oblige, the PTO partially instituted the IPRs and inevitably cancelled a selection of statements of each and every patent.  In the midst of the appeal WesternGeco and PGS settled settled their dispute. On charm, nonetheless, the PTO intervened to protect its decision.  In its decisions, the Federal Circuit has mainly affirmed, I increase a few exciting factors from the decisions below.

Partial Institution: In SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018), the Supreme Court held that the statute does not permit the PTO Director to partially institute IPR proceedings.  Nonetheless, the court held in these circumstances that no remand was necessary rethink institution considering the fact that neither get together nor the intervenor requested that action.  In PGS I, the court described:

We have uncovered no legal authority that requires us sua sponte to take care of the Board’s incorrect denial of institution as to some statements and grounds both as a foundation for disturbing or declining to critique the Board’s rulings on the instituted statements and grounds or as a foundation for reopening the IPRs to embrace the non-instituted statements and grounds.

In its temporary, the PTO even further argued that

The failure of the Board’s final written decision to address the non-instituted statements was not ultra vires and if it had been, this Court would nevertheless have jurisdiction to critique the decision. The Board’s final written decision on a subset of the claims challenged in the petition did not exceed the authority given it by Congress and is not
an ultra vires act. If nearly anything, the Board did the opposite it improperly constrained its very own authority by not adjudicating the deserves of patentability for all the claims challenged in the petition. This might have been an mistake, but it was not ultra vires.

In its decisions, the Federal Circuit did not specially address this rivalry by the Business.

Neither PGS I or PGS II involved a remand.  So, the procedural set up of this case might be contrasted with Medtronic, Inc. v. Barry, 2017-1169, 2018 WL 2769092 (Fed. Cir. June 11, 2018).  That IPR charm resulted in a remand and a statement by the Federal Circuit that “we fully grasp . . . that [the Board] will think about the formerly non-regarded grounds on remand.”  In PGS II, the court described that “Neither get together seeks a remand pursuant to which the Board would be necessary to adjudicate the statements on which the IPR was not instituted.”

No Consolidation of Appeals: The appeals here involved two distinct patents, but had been both similar to the very same infringement lawsuit and hence would have parallel effects to that litigation.  I find it exciting nonetheless, that the Federal Circuit did not consolidate the appeals in any way, and the judical panels had been solely distinct from a single a further.

Broadest Reasonable Interpretation: Last but not least, I’ll note that as the PTO continues to think about no matter if to keep on to use BRI, the PTAB and courts keep on to cancel patent statements based mostly on the present rule.

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