Dispute Over AIA Trial Institution Practices ...Be Careful What You Wish For
Since the advent of AIA trials, opponents of the system have attempted to unravel them. First, BRI was challenged, then 7th amendment constitutionality
, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc
review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.
As previously discussed
challenged all sixteen claims of ComplementSoft’s patent 7,110,936 in inter partes
review (IPR). Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the CAFC, SAS
argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a); the Federal Circuit disagreed (Judge Newman dissenting).
If it were agreed that the statute "at least one claim" is in conflict with the rule (perhaps on eventual appeal to the SCOTUS) is this really something petitioners or patentees should want?