The U.S. Supreme Court on Tuesday decided two patent cases: In Oil States Energy Services LLC v. Greene’s Energy Group LLC the justices upheld the constitutionality of America Invents Act reviews and in SAS Institute Inc. v. Iancu the court ruled the Patent Trial and Appeal Board must decide the validity of every challenged claim when it agrees to institute AIA reviews. Here, attorneys tell Law360 how these decisions will impact practicing before the PTAB.
Kia Freeman, McCarter & English LLP
“The primary effect of SAS is that petitioners will have to be more careful selecting which claims to challenge in reviews. Before SAS, the board was likely to leave inadequate claim challenges out of a review proceeding. Now, inadequate challenges are likely to result in affirmation of a claim’s validity — theoretically strengthening the value of patents in general. This seems beneficial to patent owners generally in that any claim that previously wouldn’t be instituted but is now likely to be affirmed will benefit from some estoppel that will bar some validity challenges.”