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The Impact of SAS Institute on Statutory Estoppel

IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added). Prior to the Supreme Court’s decision in SAS Institute, the courts did not apply statutory estoppel to grounds upon which the Patent Trial & Appeal Board (PTAB) refused to institute trial. The reasoning was that statutory estoppel under 35 U.S.C. § 315(e)(2) only applied to grounds adjudicated in a Final Written Decision (FWD).  As such, grounds shaken out (i.e., partial institutions) prior to trial could not be covered by such estoppel.

Post-SAS, of course, there are no longer partial institutions and this previous distinction simply goes away.  But what happens to those partially instituted cases that remain pending, can a petitioner side-step the revived SAS grounds in the hope of holding onto this estoppel exception? 
Continue Reading Failure to Pursue SAS Grounds Leads to Statutory Estoppel

Aqua Products Hoists PTAB Critics by Their Own Petard

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