As discussed in our prior post, the Supreme Court is poised to issue decisions in two cases about IPRs. The first case is Oil States Energy Services v. Greene’s Energy Group, which could eliminate IPRs and gut the PTAB role in reviewing issued patents. The second case, SAS Institute Inc. v. Iancu, could balloon the PTAB’s workload with new requirements. Although SAS has not garnered the limelight like Oil States, its potential to reshape IPRs is just as significant. The issue at stake—the propriety of the PTAB’s practice of instituting review on only some of the challenged claims rather than all of the challenged claims—does not threaten to eliminate IPRs entirely. SAS does, however, raise the possibility of a dramatic change in how IPRs occur, how they are reviewed in the courts, and how they affect litigation.
Requiring the PTAB to institute on all challenged claims, if at all, may bog down the IPR process and increase the amount the PTAB must put into the final written decision. This effect on the content of the final written decision could have two consequences. First, petitioners could be estopped from challenging claims that the PTAB previously would not have even considered. And second, petitioners could gain the ability to appeal the PTAB’s decision not to review certain claims.
As we previously wrote, Justice Kennedy may provide the decisive fifth vote in this case, as he has done in so many others, and his questions at oral argument suggested an intermediate approach. He asked both parties whether the PTAB could refuse to institute review unless the petitioner dropped its challenge to claims the PTAB did not want to review. Such a procedure may allow the PTAB to avoid instituting on claims that it does not want to review, while still completing review of all “challenged” claims.
If the Court does decide that the PTAB’s current practice in not permitted, it may endorse Justice Kennedy’s suggestion. Then, the question will be what, if anything, the PTAB needs to do to adopt this suggestion, or otherwise change its practices. If the decision is truly an impediment to the IPR process, Congress could address the issues raised in this case, since unlike Oil States, SAS concerns a statutory requirement.
The next few weeks could be fateful for IPRs. Although the Supreme Court has options that do not disrupt the current practice, and those options may well be the most likely, the Court may change IPRs and indeed patent litigation as we know it. We will cover the results of these decisions on this blog, so be sure to subscribe to get the latest news.