Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham, and on Tuesday I promised to take a break from the Supreme Court's SAS Institute decision. I lied! Given the multiple times it's popped up during this week's Federal Circuit arguments, I can't ignore it. But I've got plenty of other IP-related news and commentary below. In the meantime, email me your thoughts and feedback and follow me on Twitter.

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Federal Circuit: What to Do With These SAS Issues?

The Patent Trial and Appeal Board issued guidance last week on SAS Institute v. Iancu, the Supreme Court decision that requires the board to review all challenged claims in an inter partes review petition if it chooses to review any. The knottiest question was how to handle cases where the board already instituted proceedings on a subset of claims.

The Federal Circuit is in the same boat. There are numerous appeals of PTAB decisions pending before the appellate court where the board only reviewed a subset of challenged claims. The judges began thinking out loud about their own guidance in at least four cases argued this week. Here were some of the issues:

➤ Does SAS require the board to review each challenged claim, or every single ground of unpatentability raised within each challenged claim?

Yeda Research and Development v. Mylan is part of a big patent brawl over the multiple sclerosis drug Copaxone. The PTAB invalidated all 20 challenged patent claims—but on only one of three asserted grounds. Will the Federal Circuit have to send it back to the PTAB?

“I thought the Supreme Court was reasonably clear that both grounds and claims were encompassed within the scope of their decision,” Judge William Bryson told Goodwin Proctor partner William Jay. ”Is that not so?”

“I don't have a firm position on that,” Jay said.

“Well, but does the Supreme Court have a firm position on that?” Bryson said to laughter in the courtroom. “I had the impression they did.”

Jay clarified his client hasn't taken a position because there'd be no practical impact on the case. But, he argued, the language Justice Neil Gorsuch used in his opinion, the provision of the America Invents Act Gorsuch relied on, and the question presented by SAS's cert petition all point to claims, not grounds.

Jay's opponent, David Anstaett of Perkins Coie, agreed there's no need for remand. “I do think we have a fundamental agreement that this is not the case in which to address SAS,” he told the court.

➤ But does it matter what the parties want?

Just as in Yeda, the parties in PGS Geophysical v. Iancu sounded ready to move on with their patent lives, even if some unfinished business was left behind at the PTAB. In fact, the petitioner in the case has already settled out, leaving only the PTAB to defend its judgment. But Judge Richard Taranto didn't sound quite ready to sign off.

The question is “whether we have a final written decision in front of us that we can exercise jurisdiction over,” Taranto said. By way of analogy, if a trial court hasn't adjudicated all of the claims in a district court judgment, “we wouldn't have jurisdiction” on appeal, he pointed out.

Williams & Connolly partner David Berl, who represents patent owner PGS Geophysical, said he does not believe SAS announced a jurisdictional rule. Sometimes patent claims are amended during IPR or settled, and therefore aren't part of the final written decision. “There is a final decision in this case,” he said, “and it is a final decision on all claims that are presently in dispute between the parties.”

Judge Evan Wallach raised a practical concern. “If we did send it back down, who would represent whom with what positions?” he said.

Berl said that would lead to “sort of a kabuki theater” where the PTO plays the petitioner's role. “They'd then be judge, jury and executioner in the same case,” he said.

“They've met the enemy and he is us,” Wallach joked.

Taranto said the court may ask for further briefing on the issue.

➤Assuming the Federal Circuit does have jurisdiction, what do litigants have to do to preserve an SAS issue on appeal?

In Jazz Pharmaceutical v. Par Pharmaceutical, Quinn Emanuel Urquhart & Sullivan partner Kathleen Sullivan argued that petitioner Amneal Pharmaceutical waived any right to further PTAB adjudication by failing to move for reconsideration and by failing to file a cross-appeal. “They did not include in their red brief a paragraph as to SAS, the way we included in our blue brief a paragraph as to Oil States,” she told the court.

“We're gathering information, so I don't mean to be facetious by this question,” Judge Jimmie Reyna said. “But if you were on the other side, would your argument be the same?”

“Your honor, if I were on the other side I would say SAS gives us a do-over,” Sullivan replied. “But on my side I have to say I'm sorry, it's too late. You didn't ask for anything that would have preserved your right to a do-over.”

Amneal, which knocked out some 70 of 95 challenged claims on six patents related to the narcolepsy medication Xyrem, is not requesting a do-over. “It seems to us that we've come this far on the claims that [were] instituted,” Maddox Edwards' Steven Maddox told the court. “You should rule on those—those are properly before you.”

➤ Just how complicated is all of this going to be?

In Assa Abloy v. Spectrum Brands, Fish & Richardson partner Michael McKeon predicted there will be “a lot of interesting discussion” generated by SAS ”over the coming months and years perhaps.”

That may be, but it doesn't affect the Assa Abloy appeal, Knobbe Martens partner Michelle Armond argued. “SAS has the simple holding that all of the claims that are challenged in the petition must be considered by the board,” Armond began, before Judge Kimberly Moore interjected.

“I'm not convinced the holding of SAS is anywhere near as simple,” Moore said. “But I'm also not sure it's relevant to this case.”

“I never, ever thought I'd be a lawyer.”

— Former PTO Director Michelle Lee, recounting her journey from Silicon Valley kid to head of the USPTO on Richard Hsu's Hsu Untied podcast.

Introducing Kwun Bhansali Lazarus

San Francisco has minted another IP-centric boutique. Keker, Van Nest & Peters litigators Michael Kwun, Asim Bhansali and Kate Lazarus launched Kwun Bhansali Lazarus this week.

Kwun told my ALM colleague Xiumei Dong that the three have worked on cases together, and “along the way, we realized that all of us were interested in trying something new and maybe something a little bit more entrepreneurial.”

It's the latest in a small spate of high-profile departures from the Keker firm, which saw partner Quyen Ta leave for Boies Schiller Flexner and Ashok Ramani to Davis Polk & Wardwell earlier this year.

Keker managing partner Steven Taylor said the firm doesn't discourage its lawyers from pursuing their passions, especially when it involves a new endeavor. “Our firm was born in an entrepreneurial spirit from John Keker and Bill Brockett almost 40 years ago,” he noted.

RPX Goes Private

Since its founding in 2008, defensive patent aggregator RPX Corp. has helped reshape the patent industry. The company has proven adept at putting together massive patent licensing deals, but it hasn't delivered sustained value to shareholders.

RPX's board announced a deal Tuesday to be acquired by private equity firm HGGC for $555 million. My ALM colleague Tom McParland has the details.

Imagining a PTAB Taking

In its Oil States ruling on IPRs last month, the Supreme Court cautioned that it wasn't ruling out constitutional challenges based on due process or on takings. But what would a takings-based challenge to an IPR look like?

Ropes & Gray counsel Matt Rizzolo offers up a scenario. It involves abandoned railroad paths, bike trails and the Court of Federal Claims.

That's going to do it for Skilled in the Art this week. I'll see you all again on Tuesday.