Supreme Court Rules Inter Partes Decisions Are Here To Stay, With Modifications

The Supreme Court issued two much-anticipated decisions Tuesday in cases involving Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). In the first case, Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, 584 U.S. __ (April 24, 2018), the Court ruled that IPR proceedings are constitutional and do not violate either Article III or the Seventh Amendment. Essentially, the Court reasoned that invalidity challenges need not be brought in court, but rather such proceedings are entirely proper at the PTAB, which is itself part of the U.S. Patent and Trademark Office, which decides issues of patentability in the first instance.

In the second case, SAS Institute Inc. v. Iancu, No. 16-969, 584 U.S. __ (April 24, 2018), the Court effectively required the PTAB to address the validity of each and every patent claim challenged by a Petitioner. Thus, the Board will no longer be able to issue partial decisions, addressing some subset of challenged claims, as has been its practice to date. These partial decisions were argued to be inefficient, especially in the context of litigation.

These two Supreme Court decisions clearly indicate that IPRs are here to stay and will remain an important tool to address the validity of patents. But the PTAB's prohibition on issuing partial decisions will require more careful strategic approaches by Petitioners and Patent Owners alike to take into consideration issues of parallel litigation, estoppel, and other potential consequences.