PTAB Practice Tips Post-SAS

PTAB Practice Tips Post-SAS

James A. Worth and David P. Ruschke

On April 24, 2018, the Supreme Court held that a decision of the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) proceeding may not institute on less than all claims challenged in a petition for review. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018) (“SAS”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Prior to SAS, most panels exercised the discretion to institute only on those claims or grounds presented in the petition for which the PTAB determined a reasonable likelihood that the petitioner would prevail, pursuant to then-existing procedures. See SAS, 138 S. Ct. at 1354 (discussing the procedural history and 37 C.F.R. § 42.108(a)). Now, under current guidance, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. Guidance on the impact of SAS on AIA trial proceedings (USPTO Apr. 26, 2018), available at https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.

This article provides some tips for practitioners in drafting petitions and responses post-SAS. First, petitioners would be well-advised to continue to select their best arguments for presentation to the PTAB rather than pursue multiple additional theories that might lack adequate development. Second, patent owners may continue to defend claims as challenged in the petition, e.g., by arguing a failure of proof, by providing rebuttal evidence, or by providing Objective indicia, as appropriate. Finally, by the very terms of SAS, the statutory tools of disclaimer, amendment, and settlement remain for the parties, as patent owners determine whether and how to engage the arguments on the other side. Each suggestion will be discussed in turn.

100 J. Pat. & Trademark Off. Soc’y 271(2018)

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