Dartmouth and ChromaDex and Friday filed a petition for rehearing before the Patent Trademark and Appeals Board (PTAB) challenging the PTAB's recent order expanding the scope of its IPR trial based on the recent SCOTUS decision (SAS v. Iancu), which eliminated the PTAB's ability to institute trial on only some challenged claims. You can read Steptoe's petition here:
The essence of ChromaDex's complaint is that the SAS decision can't be applied retroactively because that will violate other statutes and regulations. ChromaDex also points out that their deposition of Dr. Joe Baur occurred before the order expanding scope, so either that work needs to be re-done or ChromaDex will suffer prejudice. Here is how Steptoe wrote it:
"The Modified Institution Decision, which purports to institute review of all claims of U.S. Patent No. 8,383,086 (“the ’086 patent”) on all grounds presented in Petitioner Elysium Health, Inc.’s (“Petitioner”) Petition, was an abuse of discretion and should be vacated. Dartmouth respectfully requests rehearing of the Board’s Modified Institution Decision because it (1) issued more than three months after Dartmouth’s preliminary response to the petition, and is therefore untimely under 35 U.S.C. § 314(b); and (2) does not comply with either 37 C.F.R. § 42.4 or 42.5(a), and therefore lacks the required notice under 35 U.S.C. § 314(c). Respectfully, the Board does not have authority to modify an institution decision, outside the timing restrictions of 35 U.S.C. § 314(b), under the statute or the rules."
"...In this trial, the Board issued its Modified Institution Decision almost six months after Dartmouth’s preliminary response (Paper 8), and after Dartmouth had deposed Petitioner’s expert, Dr. Baur, regarding the limited scope of the instituted trial. The Board’s Modified Institution Decision amounts to institution of a completely different review after the three month statutory period under 35 U.S.C. § 314(b), and there is no clear legal authority for such a decision. Neither SAS nor the Board’s April 26 Guidance on the Impact of SAS on AIA Trial Proceedings (“April 26 Guidance”) contains any such authority."
Steptoe's arguments strike me as sound. There are limits on the retroactive application of court decisions, and these are good legal and practical reasons why the SAS decision should not be allowed to unwind the proceedings, even if a do-over would have gone differently.
I don't think much is at stake, because there is no indication that PTAB would change the substance of its preliminary determination, but since Elysium is as voracious as a Tasmanian Devil when it comes to litigation, attempting to limit the scope of the dispute is a good idea. It doesn't always work -- it didn't work to moot the Patent Misuse claim in California -- but we'll see what happens here.