What to Watch as High Court Weighs PTAB Partial Decisions

On November 27, 2017 the U.S. Supreme Court will hear oral arguments in SAS Institute Inc. v. Matal, a case where SAS Institute argues that the Patent Trial and Appeal Board (PTAB) should be required to address all of the challenged claims in a patent with its final decision in inter partes reviews. Law360 contacted Finnegan partner Josh Goldberg for his thoughts on how the Supreme Court's decision could benefit patent owners and petitioners, and what consequences it may have for the PTAB. 

If the Supreme Court rules in favor of SAS, all challenged claims would have to be addressed in a final decision and could fall under the estoppel provision, which prevents those who challenge a patent from making those arguments later in litigation. Currently, the estoppel provision only applies to issues on which the board reaches a final decision. Goldberg said, "If the estoppel provision is triggered as to all claims, that would, in theory, reduce the instances of having a PTAB case and then regardless of the outcome ending up back in district court anyway because of claims the PTAB didn't institute and then chose not to address." He also noted that if the PTAB has to address all challenged claims in a final decision, PTAB trials would become significantly more complex because the board would be required to address each of the grounds that are raised in the petition.