• Skip to primary navigation
  • Skip to content
  • Skip to primary sidebar

McCarter & English Logo

  • People
  • Services
  • Insights
  • Our Firm
    • Leadership Team
    • Social Justice
    • Diversity, Equity & Inclusion
    • Pro Bono
    • Client Service Values
    • Alumni
  • Join Us
    • Lawyers
    • Summer Associates
    • Patent Professionals
    • Professional Staff
    • Job Openings
  • Locations
    • Boston
    • Philadelphia
    • East Brunswick
    • Indianapolis
    • Stamford
    • Hartford
    • Trenton
    • Miami
    • Washington, DC
    • New York
    • Wilmington
    • Newark
  • Share

Share

Browse Alphabetically:

  • A
  • B
  • C
  • D
  • E
  • F
  • G
  • H
  • I
  • J
  • K
  • L
  • M
  • N
  • O
  • P
  • Q
  • R
  • S
  • T
  • U
  • V
  • W
  • X
  • Y
  • Z
  • All
Bankruptcy, Restructuring & Litigation
Blockchain, Smart Contracts & Digital Currencies
Business Litigation
Cannabis
Coronavirus Resource Center
Corporate
Crisis Management
Cybersecurity & Data Privacy
Delaware Corporate, LLC & Partnership Law
Design, Fashion & Luxury
E-Discovery & Records Management
Energy & Utilities
Environment & Energy
Financial Institutions
Food & Beverage
Government Affairs
Government Contracts & Global Trade
Government Investigations & White Collar Defense
Healthcare
Hospitality
Immigration
Impact Investing
Insurance Recovery, Litigation & Counseling
Intellectual Property
Labor & Employment
Life Sciences
Manufacturing
Products Liability, Mass Torts & Consumer Class Actions
Public Finance
Real Estate
Renewable Energy
Sports & Entertainment
Tax & Employee Benefits
Technology Transactions
Transportation, Logistics & Supply Chain Management
Trusts, Estates & Private Clients
Venture Capital & Emerging Growth Companies
  • Broadcasts
  • Events
  • News
  • Publications
  • View All Insights
Search By:
Insights News Contract Signing
Main image for USPTO Issues Guidance on PTAB Proceedings in Light of SAS Institute Case
Publications|Alert

USPTO Issues Guidance on PTAB Proceedings in Light of SAS Institute Case

Intellectual Property Alert

4.27.2018

In SAS Institute Inc., v. Iancu et al. (584 U.S. ___ (2018)), the U.S. Supreme Court addressed whether the Patent Trial and Appeals Board (PTAB) is required to decide the patentability of every claim challenged by a petitioner when it issues a final decision in an Inter Partes Review (IPR) under the America Invents Act. Petitioner SAS had challenged all 16 claims of ComplementSoft’s software patent in a petition for IPR. The PTAB instituted review on some of the claims, but denied review of other challenged claims. Later, the PTAB issued a final decision that only addressed the patentability of the claims for which it had instituted review. On appeal, the U.S. Court of Appeals for the Federal Circuit rejected SAS’s argument that § 318(a) required the final decision to address the patentability of every claim challenged by the petitioner, and that was not the first time that the Federal Circuit had rejected such an argument.  Nonetheless, the Supreme Court disagreed.  Basing its decision on the plain text of § 318(a), the Supreme Court held that a final IPR decision must decide the patentability of all the claims challenged by a petitioner. The Supreme Court indicated the statute allows the petitioner, not the PTAB, to define the scope of the IPR, and the USPTO’s policy reasons to follow a different process should be addressed to Congress.

The USPTO issued guidance on IPR proceedings before the PTAB in view of the SAS Institute decision. In the guidance, the USPTO indicates that, going forward, if the PTAB institutes a trial, it will do so on all challenges raised by the petitioner. Pending trials in which the PTAB has already instituted trial on all of the challenges raised in the petition will continue in the normal course. For pending trials in which the PTAB has instituted trial on only some of the challenges raised, the PTAB may supplement the institution decision by issuing an order to institute on all challenges raised. In these cases, further actions to manage trial proceedings may be taken to allow all parties a full and fair opportunity to be heard. These actions include extending due dates, including statutory deadlines, and adding briefing, discovery, and/or oral arguments.

One effect of SAS Institute is that petitioners will have to be more careful selecting which claims to challenge in reviews. Before SAS Institute, 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 the patent at issue.

sidebar

pdfemail

Related People

Media item: Marcie Beth Clarke, PhD
Marcie Beth Clarke, PhD

Partner

Media item: Kia L. Freeman
Kia L. Freeman

Partner

Related Services

Intellectual Property
Subscribe to our Insights
McCarter & English, LLP
Copyright © 2023 McCarter & English, LLP. All Rights Reserved.
  • Login
  • Attorney Advertising
  • Privacy
  • Awards Methodology
  • Contact
  • Subscribe
  • Sitemap

The McCarter & English, LLP website is for informational purposes only. We do not provide legal advice on this website. We can provide legal advice only to our clients in specific inquiries that they address to us. If you are interested in becoming a client, please contact us, but do not send any information about your specific legal question. We cannot serve as your lawyers until we establish an attorney-client relationship, which can occur only after we follow procedures within our firm and after we agree to the terms of the representation.

Accept Cancel