Final Written Decision Procedures for AIA Trial Proceedings

The memorandum directs that, effective immediately and absent extraordinary circumstances, Board panels assigned to an inter partes review or post-grant review where an oral hearing has not yet occurred will address all grounds raised in the petition in their final written decisions. It sets this as the default practice for those proceedings. Petitioners and patent owners should expect final written decisions to rule on every ground in the petition, including grounds a panel might otherwise have found unnecessary to reach. That means each ground needs full briefing and argument, and neither side should count on a ground going unaddressed. The memorandum says the approach promotes compact decision making and avoids panels having to address grounds for the first time after a remand from a Director Review decision or a Federal Circuit appeal. It cites no statute, rule or decision as its basis. WHAT IT DOES: Instructs Board panels to address all grounds raised in the petition in their final written decisions, absent extraordinary circumstances. The stated reasons are to promote compact decision making and to ensure panels need not address grounds for the first time on a remand from a Director Review decision or Federal Circuit appeal. WHO AND WHEN: Applies to all Board panels assigned to an inter partes review or post-grant review proceeding where an oral hearing has not yet occurred. It is effective immediately as of the memorandum date, July 29, 2025. KEY QUOTE: "Effective immediately, absent extraordinary circumstances, all Board panels assigned to an inter partes review or a post-grant review proceeding where an oral hearing has not yet occurred will address all grounds raised in the petition in their final written decisions." (p. 1) EARLIER GUIDANCE AFFECTED: None identified in the document. PRACTICE TIP: Brief and argue every petition ground through the oral hearing, because the panel will now decide all of them. Do not abandon or under-develop a ground on the assumption that the panel will not reach it. Issued by Scott R. Boalick, Chief Administrative Patent Judge.