The SAS Decision Looks Like Making Life Tougher for Both Patent Owners and Petitioners

The Supreme Court's decision in SAS Institute v. Iancu will impact how petitioners and patent owners develop their strategies for post-grant proceedings. The decision ruled that the Patent Trial and Appeal Board (PTAB) is now required to review all claims that the petitioner has challenged in an instituted inter partes review. Intellectual Asset Management reached to Finnegan attorneys Erika Arner and Cory Bell for their thoughts on how PTAB practice may evolve in light of this decision. 

Cory said, "Because we’re dealing with the instituted proceedings right now, it feels pretty painful on the patent owner side. He also pointed out that the changes also shift part of the settlement dynamic. Prio to SAS, when an IPR was only instituted on some but not all claims, it may have indicated that the patent under review was stronger than the petitioner originally thought and therefore might have caused them to consider settling a parallel infringement lawsuit.

For petitioners, the SAS decision will cause them to closely consider which claims to challenge and on what grounds. Erika said, "For ongoing IPRs where new claims and grounds are being added, it’s clearly worse for the patent owners. But we have other clients who are very early in their cases, waiting for institution decisions, and I think some of those are big wins for patent owners because they’re petitions that were written with all kinds of grounds that now look very complex and I think are more likely not to be instituted.”