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Patent Office Clarifies Challenge Process After High Court Ruling

May 1, 2018, 6:33 PM

The Patent and Trademark Office will address all arguments raised in a patent validity challenge, and not just challenged claims, in the wake of a recent U.S. Supreme Court ruling.

David P. Ruschke, chief judge of the Patent Trial and Appeal Board, the PTO body that decides inter partes review (IPR) challenges, made the clarification April 30 in a webinar on the effects of the Supreme Court’s April 24 ruling in SAS Institute Inc. v. Iancu.

Ruschke’s comments reflect the the board’s ongoing efforts to implement the decision, which will impact how it handles IPRs. On April 27, the PTO released SAS-related guidance, giving the patent board considerable leeway on how it handles pending cases.

In an IPR, the board first reviews a petition to determine whether a challenger is reasonably likely to win on at least one claim. The board had been holding trials only on claims that were likely to be invalidated, and its final written decisions only addressed those claims.

The Supreme Court said in SAS that the board had to address all challenged claims if it decided to institute trial. Some practitioners said it was unclear whether that meant the board had to address all the grounds raised as well; for example, if the petitioner made three different arguments about why a patent claim is invalid, it wasn’t clear whether the board had to address all three arguments or just one.

The SAS decision is unclear on that issue, but the board’s new policy is to address all grounds and all challenged claims, Ruschke said. That policy can change in the future, since SAS doesn’t appear to require that particular approach, he said.

In SAS, the Supreme Court said the petitioner, not the patent board, defines the “contours” of the proceedings.

Detailed Institutions

Even though the patent board now must make a binary yes-or-no choice when deciding whether to hold a trial, Ruschke said it largely will follow its previous practice of giving as much detail as possible in its decision to institute. The exact approach—whether to address all claims individually, as a group, or picking a single representative claim—will be up to the particular panel of judges handling the case, he said.

That could help the parties focus their arguments. Some practitioners were concerned that after SAS, the board would issue shorter decisions that looked at just one of the challenged claims, making it harder for the parties to direct their efforts at the most important arguments.

Based on the guidance from the decision to institute, the parties can try limiting proceedings on their own, for example, by waiving some of the challenges in the original petition, Ruschke said.

Possible Reversals

Ruschke also said that in some cases, the patent board could reverse an earlier decision to move forward.

The written guidance issued April 27 said the board “may” supplement a partial decision to institute. In many cases, the board would change a partial institution into a full institution. But in others, it could reverse itself and decline institution altogether.

For example, a pre-SAS IPR could have had 20 challenged claims, and the board could have instituted trial on just one of them. Since the board now must institute trial on all 20 claims or none, it could decide it’s not worth the effort to hold trial when only one patent claim is really at issue, Ruschke said.

There are about 800 instituted IPRs, and about 20 percent of them involve partially instituted claims, according to Ruschke.

(Updated with additional reporting throughout)

To contact the reporter on this story: Peter Leung in Washington at pleung@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

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