Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

US Supreme Court determines that PTAB must issue a final written decision addressing all challenged claims in inter partes reviews

July 10, 2018
Author(s): Charles R. Macedo, Christopher Lisiewski*

- Journal of Intellectual Property Law & Practice, jpy092, doi.org/10.1093/jiplp/jpy092

Abstract

SAS Institute Inc v Iancu, No 16–969, US Supreme Court, 24 April 2018

In SAS Institute Incv Iancu, the Supreme Court of the USAissued a 5–4 opinion that reversed the decision of the US Court of Appeals for the Federal Circuit and held that ‘the petitioner in an inter partes reviewis entitled to a decision on all the claims it has challenged’.

SAS addressed an important question regarding US Patent Trial and Appeal Board (PTAB) practice in issuing a final written decision: ‘When the Patent Office initiates an inter partes review, must it resolve all of the claims in the case, or may it choose to limit its review to...

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