Changes shine a light on PTAB practice

In one fell swoop, SAS caused the USPTO’s Patent Trial and Appeal Board (PTAB) to revisit half of pending PTAB cases in which partial institutions had occurred. With the additional burden on the PTAB to fully address petitions, the USPTO has requested more fees for America Invents Act (AIA) trials and practitioners have adjusted strategies accordingly.

Given the increased scrutiny on the PTAB from the judiciary, the USPTO, for the first time ever, updated its Trial Practice Guide in August. This article highlights these and other key changes to PTAB practice in 2018.

SAS drives changes to PTAB practice

With the Supreme Court affirming Oil States and upholding the constitutionality of inter partes reviews (IPRs) for the time, IPRs remain a key tool for challenging patents in US litigation. However, the Supreme Court’s opinion in SAS in April 2018 caused a notable change in how IPRs are conducted: namely, the USPTO now requires the PTAB to either entirely affirm or entirely deny petitions before it.

For instance, if a petition raises three different grounds for institution regarding ten different claims, the PTAB has a “binary” decision to make on whether to institute or deny the petition on all three grounds raised in the petition with respect to all ten claims challenged.

The biggest impact from SAS is that it creates broader estoppel, as the PTAB is required to issue a final written decision on all grounds and claims in an instituted petition. For petitioners, it remains important to carefully choose the grounds asserted since estoppel will apply to all grounds raised in an instituted petition. Patent owners benefit from SAS because of the increased estoppel before the district court.

While many commentators speculated that the PTAB’s new practice of all-or-nothing institutions could cause the PTAB to issue less detailed opinions at institution (which could prejudice patent owners), practitioners have yet to see the PTAB change its prior practice of providing detailed institution decisions. The PTAB shows no sign of changing its practice, recently increasing AIA trial fees by around 25 percent in anticipation of SAS increasing its workload.

IPR institution rates continue to decline

Since SAS, there have been no noticeable changes in the rate that the PTAB institutes IPRs. However, over the last several years, institution rates continue decreasing. As shown in the most recent data available from the USPTO, IPR institution rates are at an all-time low, projected to be 60 percent this year (Figure 1).