Inter Party Review (IPR) is Constitutional and PTAB must decide the Patentability of all of the Claims the Petitioner has Challenged
The US Supreme Court issued two important decisions on Apr 24, 2018, both relating to Inter Party Reviews.
Inter Partes Review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under section 102 or 103, and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents, inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review.
The issues before the Supreme Court:
In Oil States Energy Services, LLC v. Greene’s Energy Group: whether IPR violate Article III or the Seventh Amendment of the Constitution
Court Opinion: Inter Party Review (IPR) is constitutional.
In SAS Institute Inc. v. Matal: Whether the Board must decide the patentability of all of the claims the petitioner has challenged or some of the claims.
Court Opinion: PTAB must decide the patentability of all of the claims the petitioner has challenged.
Brief about US Supreme Court opinion in SAS Institute Inc. v. Matal
35 U.S. C § 314
The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
35 U.S. C § 318
If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of anypatent claim challenged by the petitioner and any new claim added under section 316(d).
Issue before Supreme Court was:
When the Patent Office institutes an inter partes review, whether [according to 35 U.S.C. § 318(a)] it must decide the patentability of all of the claims the petitioner has challenged or some of the claims.
Opinion (attached):
PTAB must decide the patentability of all of the claims the petitioner has challenged.
Summary:
According to §314: PTAB has to institute IPR, if there is reasonable likelihood that the petitioner would succeed, at least with respect to one claim challenged in the petition.
However, from plain reading of 318 and according to yesterday Court opinion, PTAB need to provide final written decision addressing all of the claims the petitioner has challenged.
