Alleged infringers could see their courtroom options curtailed if the U.S. Supreme Court forces the Patent and Trademark Office to address all arguments made against a patent’s validity in its final written decisions—ensuring they can’t be brought up again.
The high court will hear arguments Nov. 27 in SAS Institute Inc. v. Matal about whether the PTO failed to properly follow Congress’s wishes by letting its Patent Trial and Appeal Board, early on in the process, skip less compelling arguments in a patent challenge.
One possible downside for patent owners, according to Eugene M. Paige, a litigator with Keker, Van Nest & Peters, San Francisco, is that the AIA does not allow PTAB challengers to appeal stage-one decisions to the Federal Circuit. But if the Supreme Court ends partial trials, challengers would be able to appeal rulings on all claims challenged—not just the ones that went to trial.
One upside for patent owners is that the PTAB might grant fewer trials, Paige said. It could refuse to institute trials “where only one or two claims out of a large number of claims are likely to be invalid,” he said. The AIA doesn’t “command” that the PTAB institute review when it thinks one claim may be invalid, Paige said.