On July 2, 2018, the Court of Appeals for the Federal Circuit issued a mandate in Adidas AG v. Nike, Inc., in yet another post-SAS determination. Before a panel composed of Judges Moore, Wallach, and Taranto, issued the order remanding the case back to the PTAB to address all claims and grounds originally raised in petitioner Adidas’ IPR petition.
Adidas petitioned for IPR to challenge claims in Nike’s U.S. Patent Nos. 7,814,598 (‘598) and 8,266,749 (‘749). The following chart diagrams the claims and grounds challenged:
| Patent No. | Claims | Grounds | Institution |
| 7,814,598 | 1-13 | §103 over Reed and Nishida | Yes |
| 7,814,598 | 1-13 | §103 over Castello, Fujiwara, and Nishida | No |
| 8,266,749 | 1-9, 11-19, 21 | §103 over Reed and Nishida | Yes |
| 8,266,749 | 1-9, 11-19, 21 | §103 over Castello, Fujiwara, and Nishida | No |
As apparent from the chart, the PTAB’s final decision did not address all of the grounds raised in the IPR petition; the PTAB’s final decision only addressed ground 1, that claims 1-13 of the ‘598 patent and claims 1-9, 11-19, and 21 of the ‘749 patent were not obvious over the Reed and Nishida references. Consistent with SAS Institute Inc. v. Iancu,[1] Adidas filed order for remand on ground 2. The panel agreed, without reviewing the substantive appellate aspects of ground 1.
This case differs from the decision earlier last month in PGS Geophysical AS v. Iancu,[2] where another Fed Circuit panel denied remand on an IPR case in which the PTAB did not fully address all claims or grounds raised in the original petition. We discussed this case earlier on the blog. However, in that case, none of the parties – neither petitioner PGS, respondent WesternGeco LLC, nor intervenor USPTO – requested SAS treatment of all claims or grounds in the appeal. Here, it is different: petitioner Adidas requested remand to fully address the deficient grounds raised in its IPR petition. “Equal treatment of claims and grounds for institution purposes has pervasive support in SAS.”[3]
The Fed Circuit panel determined that it was appropriate, post-SAS, to remand for decision on the remaining non-instituted grounds without first deciding the appeal of the claims and ground pending before the Fed Circuit. This case will return to the Fed Circuit, so we will continue to monitor it and report to the blog.
[1] 585 U.S.___, 138 S. Ct. 1348 (2018).
[2] ___F.3d___ (Fed. Cir. 2018) (slip op.).
[3] Id. (slip op. at 7).