Oil States and SAS: Implications of the Supreme Court's Decisions for Patent Practice

This program has been cancelled

A live 90-minute CLE webinar with interactive Q&A


Thursday, May 31, 2018 (in 8 days)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT


This CLE webinar will provide guidance to patent counsel on two recent Supreme Court patent decisions. The panel will provide an analysis of the Court’s Oil States and SAS decisions and discuss the impact of these decisions on daily patent practice.

Description

On April 24, 2018, the Supreme Court issued its decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,, upholding the constitutionality of AIA inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB). In a 7-2 decision authored by Justice Thomas, the Supreme Court held that IPRs do not violate Article III or the Seventh Amendment of the Constitution. However, the majority opinion explicitly highlighted the narrowness of its holding, noting that Oil States did not raise a due process challenge or a challenge to the retroactive application of IPR to patents issued prior to the date the AIA went into effect.

On the same day, the Supreme Court also issued a 5-4 decision in SAS Institute Inc. v. Iancu, Director, United States Patent And Trademark Office, reversing and remanding the case back to the Federal Circuit. In SAS, the PTAB instituted an IPR on some of the challenged claims and denied review on the rest. The Final Written Decision addressed only the instituted claims. On appeal, the Federal Circuit rejected SAS’s argument that 35 U.S.C. §318(a) required the Board to decide the patentability of every claim challenged in the petition. The Supreme Court, however, agreed with SAS’s reading of the statute, holding that all Final Written Decisions from the PTAB must address the patentability of all claims challenged in the petition.

This represents a dramatic shift in PTAB practice, and one that may also have ramifications for litigation, as, for example, it may now be hard for a losing petitioner to argue that not all claims were considered for purposes of IPR estoppel.

The USPTO responded quickly, issuing a Guidance memo post-SAS and holding a public webinar on post-SAS PTAB practice. The PTAB is going forward with a “binary institution analysis”—: either all claims and all grounds are instituted or all claims and all grounds are denied.

What do these decisions mean for the patent bar? Our expert panel will look at the PTAB decisions in the immediate aftermath of Oil States and SAS and discuss the impact of these decisions on daily patent practice.

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Outline

  1. Supreme Court’s Oil States decision
  2. Supreme Court’s SAS decision
  3. Implications of both decisions for petitioners, including PTAB decisions since the Supreme Court decisions issued
  4. Implications of both decisions for patent owners, including PTAB decisions since the Supreme Court decisions issued

Benefits

The panel will review these and other critical issues:

  • Has there been an increase in IPR petition filings now that the proceedings have been found constitutional?
  • Have the constitutional issues raised by the Oil States majority been raised by parties already?
  • Has SAS helped clarify the scope of IPR estoppel?
  • Has SAS impacted the level of detail of institution decisions and/or the scope and detail of Final Written Decisions?
  • Has PTAB extended its statutory deadline for any Final Written Decisions?
  • Have any post-SAS Final Written Decisions been appealed to the Federal Circuit?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

Rudolph, Barbara
Barbara R. Rudolph, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Rudolph has successfully litigated complex Hatch-Waxman Paragraph IV Abbreviated New Drug Application and...  |  Read More