On April 24, the U.S. Supreme Court handed down its 5-4 decision on SAS Institute v. Iancu. Their ruling states that the Patent Trial and Appeal Board (PTAB) must assess all challenged claims of an Inter Partes Review (IPR) rather than choosing to review only some.
Some were not surprised by the ruling as it generally follows the language in the America Invents Act. Some still find it at odds with the how the statues are generally followed at the PTAB, however.
“The statute has been contradicted by the regulations implemented by the USPTO. Those regulations give the board discretion to institute all or some of the challenged claims in IPRs,” says Matt Cutler.
The PTAB will still have the ability to deny instituting IPRs if none of the claims challenged in a petition meet the institution standard, which is met when a claim is reasonably likely to be found unpatentable. But now, if even just one claim meets that standard, all claims challenged in the petition become part of the Inter Partes Review trial.
Another side-effect of the decision is that the estoppel that comes along with IPR challenges will now extend further. “This decision will ensure that all claims will go through the trial, thus ensuring that estoppel will (at least to some extent) apply to all challenged claims,” suggests Cutler.
New guidelines from the PTAB are expected in the coming weeks.