United States: Federal Circuit May Retain Jurisdiction To Decide Pre-SAS Appeals Where Less Than All Claims Were Instituted

In PGS Geophysical AS v. Iancu, Nos. 2016-2470, -2472, -2474 (Fed. Cir. June 7, 2018), the Federal Circuit held that it may retain jurisdiction over IPR appeals even where the Board did not institute on all claims challenged in the petition, as required by the Supreme Court's decision in SAS Institute, Inc. v. Iancu, and that it need not remand for a final written decision on non-instituted claims in some cases. The court affirmed the PTAB's obviousness finding for the claims on appeal.

PGS owns U.S. Patent No. 6,906,981, which is directed to seismic surveying. WesternGeco filed three IPR petitions against the '981 patent. The PTAB instituted review on some, but not all, of the challenged claims and some, but not all, of the grounds asserted in the petitions. The PTAB then issued final written decisions finding some of the instituted claims obvious and some nonobvious. Both parties appealed, but then settled and WesternGeco dropped its appeal.

On appeal, the court first addressed whether it had jurisdiction to decide a pre-SAS appeal where all claims were not instituted. The court held that it did, finding that the finality requirement of the Administrative Procedures Act is satisfied because a partial institution decision and a final written decision finally dispose of all claims. The court analogized this type of appeal to civil litigation where a district court "incorrectly dismisses one count" of a two-count complaint early in a case and then decides the merits of the second count. Once the district court decides the second count, both counts are appealable. The court explained that even though partial institution is erroneous under SAS, "legal error does not mean lack of finality." The court also determined that remand was not necessary to "revive the non-instituted claims and grounds" because that neither party had requested SAS-based relief on appeal.

Turning to the merits, the court then held that substantial evidence supported the PTAB's obviousness finding and affirmed its obviousness analysis.

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