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23 May 2017Patents

US Supreme Court to hear case on PTAB

The US Supreme Court has agreed to hear a dispute that should clear up rules surrounding the inter partes review procedure at the US Patent and Trademark Office.

In a notice published on Monday, May 22, the court accepted software company SAS Institute’s petition for a writ of certiorari.

The dispute, SAS Institute v Lee, hinges on section 35 of the US Patent Code and the procedure surrounding IPRs.

At issue is whether the America Invents Act, which created the Patent Trial and Appeal Board—at which IPR disputes are heard—can allow an IPR to be partially instituted or if the board has to honour a plaintiff’s entire claim.

A partial institution would mean that in any given dispute the PTAB could consider the patent claims that it chooses rather than all of the claims to have been challenged.

The case arose from a petition for an IPR that SAS filed in 2014. The IPR challenged a patent owned by software development company ComplementSoft.

The IPR challenged each of the patent’s claims, but the board agreed to review only some. The PTAB’s final decision found that all but one of those claims were invalid.

However, SAS appealed against the decision and claimed that the PTAB should be required to address the patentability of every challenged claim, not just those it agrees to review.

In June 2016, the US Court of Appeals for the Federal Circuit affirmed the board’s decision regarding IPR procedure, prompting SAS to appeal to the Supreme Court.

SAS’s petition was filed in January this year.

Last month, the US Department of Justice filed a brief defending the PTAB’s process, arguing that it streamlined appeals.

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