Yesterday the United States Supreme Court issued decisions in both Oil States v. Green Energy and SAS Institute v. Iancu. In Oil States the Supreme Court upheld the constitutionality of inter partes review (see here, here and here). In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged.
To provide instant reaction to the Supreme Court’s decision in SAS Institute we’ve reached out to an All-Star panel of industry experts for their take on this important decision. Their analysis follows.
“SAS: When the Patent Office Institutes IPR It Must Decide Patentability of All Challenged Claims.” Quinn et. al. IPWatchdog (April 2018), available here.