Previously, Emily Greb posted on the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, Dir. U.S. Pat. & Trademark Off., 138 S. Ct. 1348 (2018), which held that when the Board institutes an inter partes review, it must decide the patentability of all claims challenged in the IPR.
Now, Emily and Tyler Bowen, with assistance from Gene W. Lee, Bryan D. Beel, and Maria A. Stubbings, have published a short research paper entitled The Supreme Court’s SAS Decision: Has All-Or-Nothing Institution Created A Wave Of Change? [PDF]
As noted in its synopsis, the paper summarizes the outcomes of the Board’s institution decisions since SAS was issued, and contemplates the decision’s impact on IPR practice going forward:
When the U.S. Supreme Court decided SAS Institute Inc. v. Iancu in the spring of 2018, it held that the Patent Trial and Appeal Board must institute inter partes review on either all claims raised in a petition or none of them. The ruling triggered anticipation of a major shift in the Board’s approach to institution of inter partes review.
Did the expected wave of change occur?
To find out, we conducted original research into the impact of SAS. In the following analysis, we separate the hype from reality and consider the implications for inter partes review practice.
We hope you find the authors’ insights informative and helpful.