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Challenging A Patent At The PTAB – It’s All Or Nothing, Baby

May 02 2018

On April 26th, the USPTO released a memo stating that, in light of the United States Supreme Court decision in SAS Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018), when the PTAB initiates a trial, it will do so on all challenges raised in the petition.

The former approach taken by the PTAB allowed for the panel to initiate trial on a subset of all of the challenges submitted by a petitioner.

The memo went on to state that for those trials currently in process, where only a subset of the challenges are being reviewed, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.”  Noting that these changes may create additional hurdles, the memo provides that these panels 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.”

This memo is quick on the heels of the ruling in SAS, which came just two days earlier.

This ruling goes hand in hand along with the Supreme Court’s ruling in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which held that inter partes review of patents are valid and do not violate Article III of the US Constitution or the 7th Amendment.  It is also interesting to note that both were decided on the same day (April 24, 2018).

On one hand, we have resolution and clarity on the validity of the inter partes review process, and that petitions will be heard in their entirety or not at all.  On the other hand, what we do not know is how this will alter the decisions made by the PTAB.

For instance, previously, when the PTAB had the ability to select which challenges in a petition it would hear, the PTAB would offer quite comprehensive explanations for the decisions it makes.  It is unclear as to whether the PTAB will be able to keep to the same time schedule that it has with these trials, and still offer the same comprehensive explanations it currently does, now that the panel must hear all challenges raised in the petition.  The flip side to this is it may also result in the PTAB accepting fewer challenges, since it simply does not have the capacity to provide detailed findings for the broader challenges it now must hear.  Alternatively, the PTAB may simply start offering more limited explanations for its findings.

Further, there is a question as to how this will impact patent infringement litigation matters in courts where certain judges refuse to stay trials where an ongoing inter partes review is being conducted on less than the entirety of the granted claims.  Since now  that inter partes review approved by the PTAB will be taking the all or nothing approach, it is possible judges may take this into consideration when reviewing a possible stay in these litigation matters.

While we look forward to what comes next, the one thing we do know is that inter partes reviews are here to stay.  For parties being threatened by patents they feel are invalid, this is good news.  Inter partes review provides these parties the option to challenge bad patents in a forum that is much more efficient and cost effective than the US court system.