High Court Ruling Changes Patent Office Challenge Dynamics

The U.S. Supreme Court's decision in SAS Institute v. Iancu ruled that the Patent Trial and Appeal Board (PTAB) must address all challenged claims in America Invents Act (AIA) reviews, and the board can no longer select which challenged claims to rule. Attorneys agree that the decision will impact how the PTAB handles AIA proceedings. Bloomberg Law contacted Finnegan attorney Erika Arner for her thoughts on the Supreme Court's decision. 

Erika said, "Overall this is going to increase the workload for not only the PTAB, but for the parties as well." She also noted that the PTAB may feel that it needs to not only address all the challenged claims, but also every basis for a challenge, which will result in more complex cases in an already complex process. 

The SAS decision also makes estoppel apply more broadly, which is favorable to patent owners. Erika predicted that district courts will be more willing to put a hold on their own proceedings to give the PTAB a chance to rule on a corresponding IPR, given that more issues will now be resolved.