On April 24, 2018, the U.S. Supreme Court issued decisions in Oil States Energy Services LLC v. Greene’s Energy Group LLC and SAS Institute v. Iancu, two cases that revolved around America Invents Act (AIA) reviews. SAS Institute is a case that questioned whether the Patent Trial and Appeal Board (PTAB) should decide on the validity of all challenged claims in AIA reviews, rather than just selected claims. Law360 reached to Finnegan partner Josh Goldberg for his thoughts on the SAS Institute decision.
Josh said, "This morning is about Oil States. This afternoon and the coming months will be about SAS. Not only did the Supreme Court reverse the Federal Circuit and hold that SAS is entitled to a final written decision addressing all of the claims it has challenged, the Supreme Court also telegraphed that petitioners are entitled to final written decisions addressing all of the grounds in their petitions. The Supreme Court’s decision thus has the potential to upend the entire patent challenge process. The board, petitioners, and patent owners will need to figure out what to do with cases in which the board only instituted review for some of the claims.”
