Pending Cases to Revisit Pruned Claims/Grounds

Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:

[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. … ¶ [F]or pending trials . . . the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.

You can find the full guidance (here)

Patent Owners Will Not Like the Post-SAS PTAB

Last month, I predicted a 7-2 affirmance of Oil States (although I had Kennedy in the dissent with Gorsuch rather than Roberts). Still, the outcome of this closely watched case was hardly a surprise, nor was the content of the dissent. (here) While some will read the “narrow” holding characterization of the Oil States majority as a beacon of hope for further constitutional challenges, I don’t see that at all. Rather, I see the Court making clear that it is not indirectly endorsing any PTAB practices highlighted in the briefing, oral argument, and in the dissent — panel stacking perhaps being the most noteworthy. Going forward, I don’t see much Oil States impact at the PTAB.

SAS Institute on the other hand, will bring about some of the most significant PTAB practice changes to date. Continue Reading How the SAS Institute Ruling Will Impact PTAB Practice

High Court Poised to Endorse PTAB & Partial Institution Practices

While I will discuss my more detailed impressions during tomorrow’s webinar, a few quick thoughts.

Oil States

-Article III review of the PTAB, and more particularly de novo review of legal issues, was key to a majority of Justices.

-Trying to distinguish reexamination and IPR never made sense in view of Cuozzo, and it backfired on petitioner.

-Justice Gorsuch appeared to be the only one accepting the real property analogy to patents.

-Patent validity did not resonate as a private right.  The distinction between validity (public) and infringement (private right) appeared to be accepted by the majority.

Prediction: Affirmance. (8-1 or 7-2) — Transcript (here)

SAS Institute

-I assumed this case (given its rather mundane issues from a SCOTUS perspective) was taken as a vehicle to reign in Chevron Deference. Chevron never came up, just straightforward statutory interpretation issues.

-With the exception of Justices Gorsuch and Alito, everyone else seemed to accept the PTAB interpretation given the discretion expressed across the statutory scheme of the AIA.

-The lack of amicus filings (only 1) made clear that this is the case nobody wants; the Court got the message.

Prediction: Affirmance (7-2) — Transcript (here)

SAS Institute To Send Patent Owners Screaming Into the Night?

The Supreme Court will get a heavy dose of the PTAB on November 27th. That is the day the High Court will hear oral arguments in both the Oil States and SAS Institute appeals. While almost all of the focus to date has been on Oil States, the case that is likely to have the biggest impact on the PTAB is SAS.

As a reminder, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA).  That is, if the PTAB finds that at least one claim is demonstrated as reasonably likely to be proven (RLP) unpatentable, the PTAB should institute an IPR trial for all petitioned claims. As of today, if a petitioner challenges, say claims 1-10 of a patent, the PTAB assesses each claim as to the RLP standard.  So, if the PTAB is not satisfied as to claims 5-6 of claims 1-10, trial would only go forward on claims 1-4 and 7-10.

If SAS is successful on appeal, PTAB trials would go forward on all claims as long as a single claim of the petition was deemed to meet the RLP standard. This would be a significant change to PTAB trial practice with unfortunate consequences for Patent Owners. Continue Reading SAS Institute & The PTAB: Be Afraid Patent Owners