One of the biggest changes coming out of the 2011 America Invents Act (AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.) was the creation of the inter partes review (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) procedure, which allows people to challenge the validity of patents after they’ve issued. Today, the Supreme Court granted certiorari to determine whether an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. can be “instituted” on only some of the challenged claims, or whether all claims have to receive a final decision. The case is called SAS v. Lee.
The IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. process, at a high level, has four main phases.
First, the challenger puts together a document (the petition) explaining why they think the patent is invalid, and explaining what art they used to challenge which claims in detail. Second, the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) decides whether there’s a “reasonable likelihood of success” that at least one claim is invalid, and issues a “decision on institution” explaining which claims it thinks are likely invalid. Third, there’s a limited period of time during which the patent owner and the challenger take depositions; the patent owner also responds to the PTAB’s decision to institute an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., and the challenger can respond to the patent owner’s comments. Finally, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. will conduct an oral hearing and then issue a final written decision on the patentability of any claims on which review was instituted. In the third and fourth phases, the procedure focuses only on the claims that the Board decided were likely invalid.
Let’s say SAS filed a petition challenging claims 1-10 of a patent. The key question for this case is whether the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. can decide only to institute an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. on claims 1-5 and not handle claims 6-10, known as “partial institution,” or whether the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. has to look at all of the challenged claims.
History Lessons
The AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. has an extensive legislative history. For the full details, I highly recommend starting with Joseph Matal’s pairPatent Application Information Retrieval System. The USPTO's electronic system for storing and accessing information regarding a patent. There is a public version for searching file wrappers. of articles summarizing the Act.
But the historical key for understanding why the SAS case is important comes from a hearing held in the House Judiciary Committee back in 2005. This hearing was convened to “explore the merits of a committee print that incorporates a number of changes to improve the quality of patents issued by the U.S. Patent and Trademark Office.” (emphasis added). The IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. procedure isn’t primarily a litigation substitute — its purpose is to address deficiencies in patent quality at the back end, after the Patent Office has issued a patent.
Challenges to Partial Institution At The Federal CircuitSee CAFC
This isn’t the first time the issue of “partial institution” has been raised in court. The issue also came up when Synopsys challenged certain claims in a Mentor Graphics patent back in 2014. In 2016, in the Synopsys case, the Federal CircuitSee CAFC decided that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. was allowed to only look at a subset of claims.
The Federal CircuitSee CAFC looked at the language of the statute, which uses different terms to describe claims challenged in the petition versus the claims included in a final written decision. The Federal CircuitSee CAFC also pointed to the benefits of a full record, since the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. would only have a fill briefing on the instituted claims. Based on these factors, the Federal CircuitSee CAFC found the text of the statute was clear — partial institution is allowed. In addition, the Federal CircuitSee CAFC noted that if the statute was ambiguous, they would defer to the PTO’s judgment, which is reflected in the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. rules the PTOPatent and Trademark Office, informally used interchangeably with USPTO. issued.
Subsequently, SAS filed an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. challenging claims in a patent belonging to ComplementSoft. The PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. decided to institute an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. on only some of the challenged claims, and invalidated all but one of the claims they instituted the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. on. Both SAS and ComplementSoft appealed this decision to the Federal CircuitSee CAFC, with SAS arguing that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. should have issued a decision on all claims.
I’ll note that this appears primarily to be a strategy to revisit the decision — SAS, as challenger, wouldn’t want PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. to issue a decision holding claims valid, so the goal of this challenge appears to be to get the PTAB’s decision overturned and get a second bite.
The Federal CircuitSee CAFC denied SAS’s appeal on this issue, citing to the Synopsys decision. SAS sought en banc review from the entire Federal CircuitSee CAFC, and was again denied. They filed a certiorari petition, and today the Supreme Court granted certiorari.
What Will SCOTUS Do?
As we saw in the TC Heartland decision today (more information on that case will be in my next post!), the Federal CircuitSee CAFC doesn’t have the best record at the Supreme Court. Given that the Federal CircuitSee CAFC has said “partial institution” is okay, it seems likely that the Supreme Court will do the usual thing by overturning the Federal CircuitSee CAFC and requiring decisions to issue on all challenged claims.
The Supreme Court could do this in at least a couple ways. One possibility would be requiring the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. to issue a final written decision on all challenged claims, whether or not an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. was instituted on those particular claims. Another would be requiring the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. to institute an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. on all challenged claims if they think even one is likely invalid.
I don’t think either approach to overturning the Federal CircuitSee CAFC would be the right decision here. Issuing decisions on claims that lack a fully developed record doesn’t serve anyone’s interests in maintaining high-quality patents. And forcing the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. to develop a full record on all challenged claims would just add to the PTAB’s workload to no real benefit, bogging down the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. process and taking away the value of IPRs as an alternative to a district court validity challenge.
