Bob Stoll, partner and co-chair of the Intellectual Property group in Washington, D.C., was quoted in an IP Watchdog article titled “Predicting SAS Institute in Advance of SCOTUS Oral Arguments.” The oral arguments in SAS Institute v. Matal, scheduled for November 27, will give the Supreme Court the opportunity to make a key decision about inter partes review, determining whether the Patent Trial and Appeal Board (PTAB) must issue a written decision covering all challenged claims. SAS Institute and the high-profile Oil States Energy Services v. Greene’s Energy Group may have significant ramifications on the post-grant processes created by the America Invents Act.
Bob predicts that the oral arguments in SAS Institute will not result in the PTAB having to provide a written decision for each challenged claim. He says, “The statute under 35 USC 316 (a)(2) gives the authority to the USPTO to make rules for setting the standard for showing of sufficient grounds to institute a review,” and states that he believes the USPTO has already properly followed rule-making protocol in determining its standard. Bob predicts the PTAB will only have to provide a written decision on any claims for which the process was instituted or added later and not cancelled.