Possible High Court Outcomes For PTAB Partial Reviews

By Benjamin Haber (November 29, 2017, 2:08 PM EST) -- On May 22, 2017, the U.S. Supreme Court granted certiorari in SAS Institute Inc. v. Matal to consider whether the U.S. Patent and Trademark Office is allowed to issue final validity decisions on just a subset of claims challenged by the petitioner in an inter partes review. This case could rule that one of the patent office's common IPR practices is improper. IPR proceedings allow any party to challenge the validity of issued patent claims. But the patent office has adopted regulations that permit it to address less than all of the claims challenged. This frequently results in an IPR requester receiving a final decision on only some of the claims it seeks to invalidate. The Supreme Court granted certiorari to address whether this practice complies with 2011's America Invents Act patent reform legislation. The Supreme Court heard arguments of the parties and the government on Nov. 27, 2017....

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