PTAB Post-SAS: What We Know and What Questions Remain

Following the U.S. Supreme Court's decision in SAS Institute v. Iancu, questions still remain regarding how institution rates will change, how practice in front of the PTAB will evolve, and how district courts and the Federal Circuit will react. Managing Intellectual Property contacted Finnegan attorney Trenton Ward for his thoughts. 

Trenton said, "APJs now have a new tool for denial that was not previously used. You can argue whether or not they had discretion to do it previously, but certainly it wasn’t the practice of panels to decide to not institute a case simply because there were more grounds that didn’t reach the reasonable likelihood threshold as opposed to grounds that did meet it. I think we are in a new framework now."

He believes institution rates will slightly decrease. He said, "We have seen a downwards trend. My estimation is we are going to see another few percentage points, we may get into the 50s but not into the 40 percentile range or anything like that. The APJs now have the ability to do denials in situations where they may not previously have done, so we will see slightly more denials of institution.”