Maier & Maier Mounts Yet Another Successful Defense at the PTAB

In their latest triumph at the PTAB, Maier & Maier PLLC has won a major victory for GREE, Inc. by securing a non-institution decision, overcoming 3 challenges to their social gaming patent asserted by Supercell Oy in PGR2018-0037.

The challenged patent (9,662,573) covers a method for controlling a server device, a server device, a computer-readable recording medium and a game system. Supercell challenged the patent on three grounds: §101, §112(a), and §112(b).

The PTAB denied institution of the challenge as to all of the claims.  The PTAB explained their decision on the §101 challenge, stating “we are unpersuaded by Petitioner’s argument that providing these sequential incentives, as claimed, was conventional and known in the prior art.”  The analysis goes on to emphasize that Supercell failed to provide evidence, such as expert testimony or contemporaneous prior art, and also failed to provide relevant case law or persuasive argument to support its contention. Meanwhile for the §112 challenges, Maier & Maier successfully demonstrated that the patent was “cast in clear—as opposed to ambiguous, vague, indefinite—terms” and that Supercell “offered no credible evidence to support its assertion”.

Since Maier & Maier showed that none of the asserted grounds for unpatentability demonstrated a reasonable likelihood of success, as discussed above, the PTAB issued a decision denying institution, dealing Supercell a serious blow in their ongoing patent litigation.


Oracle Corp. v. Click-to-Call Technologies LP

Under 315(b) of the AIA (America Invents Act), Inter Partes Review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”[1] The Click-to-Call decision revolves around whether the time-bar applies when a complaint has been voluntarily dismissed without prejudice.

In 2001, the patent in this case, U.S. Pat # 5,818,836, had been exclusively licensed to Inforocket, who filed a patent infringement suit asserting the ‘836 patent against Ingenio (then under its previous name, Keen).[2] Ingenio then purchased Inforocket as a wholly-owned subsidiary, and the parties stipulated to dismiss the suit without prejudice.[3] Subsequently the ‘836 patent was acquired by Click-to-Call.  On May 29, 2012, Click-to-Call filed suit asserting the same ‘836 patent against a number of defendents, including Ingenio, leading to the filing of this IPR. [4]

In an opinion designated as precedential by the PTAB, the Board ruled that a voluntary dismissal of a suit creates an exception to the 315(b) time-bar. “The Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.”[5] Based on the premise that a voluntary dismissal serves to nullify the existence of a suit, the PTAB held that the one-year time limit for filing an IPR would be nullified along with it.

On appeal, the Federal Circuit disagreed and found that the PTAB committed legal error in its determination.  The Federal Circuit overturned the PTAB ruling. As the decision explains “the provision unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement. Simply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”[6]

Unlike the 2001 infringement complaint, the PTAB’s precedential time-bar decision has now been entirely nullified.


[1] 35 U.S.C. § 315(b)

[2] Oracle Corp. v. Click-to-Call Technologies LP, IPR2013-00312, Paper 26 at 14 (PTAB Oct. 13, 2013).

[3] Id.

[4] Id.

[5] Id at 17.

[6] Oracle Corp. v. Click-to-Call Technologies LP, Slip Op at 13 (CAFC Aug. 16, 2018).


USPTO Proposes Patent Fee Changes

The USPTO has published a Notice in the Federal Register of proposed patent fee changes for public comments.

The fee adjustments resulting from this effort will not be implemented until the January 2021 timeframe.  The proposed average five percent increase to fees is similar to fees rising by 1.6 percent annually over a three year period.

This proposal includes introduction of new fees, targeted adjustments to existing fees, and discontinuation of some fees.

New Fees

  1. One proposed new fee is a surcharge for filing in a non-DOCX format.  This will be a $400 fee, and will encourage applicants to use the DOCX format, and is intended to improve Office efficiency and future search capabilities.
  2. Another proposed new fee is an annual active patent practitioner fee of $340 (if filed electronically). Further, a discount will be offered to those who certify completion of continued legal education (CLE), reducing the fee to $240.
  3. A fee for non-registered practitioners to appear before the PTAB is proposed.

Adjustments to Existing Fees

  1. A significant increase (525%) to the surcharge for late payment of maintenance fees.  The fee is currently $160, but will be increased to $1000 for large entities.
  2. An increase from $900 to $2000 the fee to request expedited examination of a design application, to help the Office manage staffing for these services.
  3. Issue and maintenance fees will be restructured.  The current large entity maintenance fees are $1600 (3.5 years), $3600 (7.5 years), and $7400 (11.5 years), and the proposal increases them to $2000 (3.5 years), $3760 (7.5 years), and $7700 (11.5 years).
  4. Fees for America Invents Act (AIA) trials are proposed to increase by roughly 25% due to a variety of factors, including the Supreme Court decision in SAS Institute Inc. v. Iancu.

Discontinuation of Fees

Fees related to obtaining copies of Patent Grant and Patent Application Publication TIFF Images or Full-Text W/Embedded Images will be eliminated and the Office will instead provide these services, in a slightly modified form (i.e. electronic), for free.

Below is a summary table of the common fees for a large entity to illustrate some of the proposed changes.

As seen below, total filing costs for a patent application (large entity) will increase $1720 increase to $1820.


Stephen G. Kunin Selected For 2019 Best Lawyers Award!

Maier & Maier is pleased to announce that one of our partners, Stephen G. Kunin has been selected by his peers for inclusion in the 2019 25th Edition of The Best Lawyers in America. This recognition in the field of Patent Law has been released publicly and is now available on www.bestlawyers.com. We congratulate him on achieving this honor.

 


Tribal Sovereign Immunity Does Not Apply in IPR Proceedings

In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Nos. 18-1638 to 18-1643, the Federal Circuit, in a precedential decision, affirmed the PTABs denial of St. Regis’s motion to terminate IPRs filed by Mylan based on tribal sovereign immunity. Tribal immunity does not apply in IPR proceedings because the USPTO is pursuing an adjudicatory agency action.

The Court concluded that “IPR is more like an agency enforcement action than a civil suit brought by a private party…. IPR is more like cases in which an agency chooses whether to institute a proceeding on information supplied by a private party.” Judge Moore writing for the panel majority averred that “[t]he Director’s important role as a gatekeeper and the Board’s authority to proceed in the absence of the parties convinces us that the USPTO is acting as the United States in its role as a superior sovereign to reconsider a prior administrative grant and protect the public interest in keeping patent monopolies ‘within their legitimate scope.'” (quoting Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)).

In his concurrence, Judge Dyk wrote to describe in greater detail the history of inter partes review proceedings, history that confirms that those proceedings are not adjudications between private parties. While private parties play a role, inter partes reviews are fundamentally an agency reconsideration of the original patent grant, similar to ex parte reexamination and inter partes reexamination proceedings, which are not adjudications of private disputes and to which sovereign immunity does not apply.

The Court’s opinion was limited to whether tribal immunity applies in IPRs: “we leave for another day the question of whether there is any reason to treat state sovereign immunity differently.”


PTAB Designates 5 Decisions as Informative

The PTAB has designated five new decisions as informative, three on IPR practice procedure and two ex parte decisions (one on issue preclusion and one on claim construction):

Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013)

Here the Board provides guidance on foreign depositions, both on the location where they are taken and the language in which they are conducted. The Board emphasizes that “the parties are in the best position to determine the procedure by which the deposition is to be conducted” but provides 12 general guidelines for procedures to use for depositions in foreign languages covering such topics as 1). each sides’ right to bring an interpreter, 2). protocol for resolving disagreements between interpreters on their respective interpretations, and 3). notice requirements on documents which will be “sight read” at the deposition. The full list is available in the decision linked above.

Ex parte Jung, 2016-008290 (PTAB Mar. 22, 2017)

In this appeal, the appellant challenged the examiner’s interpretation that the claim language “at least one of a connection branch and a contents connection list” required only ‘a connection branch’ OR ‘a contents connection list’ as opposed to requiring both of their presence. In their reversal, the Board applied the ruling from the Federal Circuit in SuperGuide Corp. v. DirecTV Enterprises, Inc., which explained that the plain meaning of ‘at least one of A and B’ is the conjunctive phrase ‘at least one of A and at least one of B.”[1] The Board explained that the plain meaning could have been rebutted with a demonstration that the other claims, specification, or the prosecution history necessitated a broader interpretation, but, absent such a showing, the examiner erred.

Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018)

In this decision, the Board offers an analysis on the ‘good cause’ standard for protective orders.  The Board denied a motion for a protective order without prejudice for failure to demonstrate that “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4), on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.”[2]

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., IPR2018-00242, Paper 9 (PTAB Feb. 27, 2018)

The decision here applies to § 315 bars to institution in IPRs. Specifically, the Board found institution was barred when a petitioner has previously filed for a declaratory judgment of invalidity on the same patent.  Furthermore, the Board ruled that a motion for joinder could not save a petitioner from the statutory bar under § 315(a)(1). In its reasoning, the Board explains that while a § 315(b) time bar is specifically excluded in instances of joinder under § 315 (c), the statutory bar for § 315(a)(1) provides for no such exemption.

Ex parte Ditzik, 2018-000087 (PTAB Mar. 2, 2018)

Here, the Board upheld an examiner’s use of issue preclusion from a related invalidity finding against the applicant in District Court. In so doing, the Board found the following arguments by the appealing applicant accurate, but unpersuasive with respect to issue preclusion: 1). The fact that the claims are not the same in the proceedings; 2). The procedural possibility for the District Court ruling to be overturned; and 3). The PTO’s absence as a party from the District Court proceeding. While the Board did not find any of the following in this case, it allowed for potential rebuttals to issue preclusion when 1). The standard applied in the prior final decision might have caused a different outcome than before the Board; 2). Evidence available now was demonstrated to not be available at the time of the prior proceeding; or 3). There was otherwise not a ‘full and fair opportunity to litigate’ in the prior proceeding and the Board wishes to exercise its discretion despite the motivations of efficiency and consistency for issue preclusion.

Each decision is linked in the respective heading above for more information and reference, and a full list of all precedential and informative decisions is available here.


[1] 358 F.3d 870, 885-86 (Fed. Cir. 2004).

[2] 37 C.F.R. § 42.54(a).


IP5 Unveils New Pilot Program for Collaborative Search and Examination

On July 1, 2018, the IP5 (Patent Offices for the US, the EU, Japan, Korea, and China) launched a new pilot program, PCT CS&E, testing collaborative search and examination for the PCT.  The Pilot Program is currently scheduled to take a total of three years. In years one and two the IP5 will be conducting the collaborative Pilot Program, while the third year will revolve around studying its effects. 100 applications from each International Search Authority will be accepted to the Pilot Program over the first two years, for a total of 500 files total. The goal of CS&E is to increase efficiency for the respective Patent Offices and applicants.

An application submitted to the CS&E Pilot Program is first reviewed by the PCT ISA to verify the fulfillment of required CS&E criteria and other application formalities before acceptance. The application is then sent to the first ISA (one of the IP5) for a provisional search and provisional opinion, which are sent to the “Peer” offices of the other IP5 who provide any additional comment and contribution to the search. After all four of the other offices have reviewed and contributed, the first ISA compiles the cumulative work, and produces a Final International Search Report and Written Opinion.

The total PCT CS&E process is expected to take a maximum of 16 weeks from receipt by the first ISA to the Final International Search Report and Written Opinion (eight weeks for initial search, four weeks for peer review, and four weeks for final drafting and incorporation of peer review). With the additional review from the other four IP5 offices, applicants who are planning to file in the IP5 may expect to have more expedited national phases.

There have previously been two pilot programs where the USPTO coordinated with other offices in order to determine the most effective operational system for inter-office collaboration. The goal of improving efficiency for applicants and patent offices will be reviewed in the third year of the Pilot Program. Participation in the PCT CS&E must be requested at the time of the filing and can be requested either online or using a provided PDF form. For more information on the Pilot Program, see the USPTO’s information page here.


Stephen Kunin Joins Maier & Maier PLLC

July 2, 2018 (Alexandria, VA) Maier & Maier PLLC is proud to announce its newest addition to the firm, Stephen Kunin, the former Deputy Commissioner for Patent Examination Policy at the United States Patent and Trademark Office.

As an expert in patent law for over 48 years, Mr. Kunin is a highly respected member of the patent industry. One of the masterminds of the revisions to the Rules of Practice and Manual of Patent Examining Procedure, Mr. Kunin worked over 3 decades at the U.S. Patent Office, serving his final ten years as Deputy Commissioner for Patent Examining Policy, and winning 9 Medals (4 Gold) from the Department of Commerce, a Career Achievement Award from the USPTO, and a Reinventing Government Hammer Award from the Vice President, among other notable distinctions.

Mr. Kunin brings with him an expert level of knowledge in every aspect of prosecution and post-issuance proceedings, a highly strategic thought leader on the tactical advantages of post-grant procedures in lieu of traditional litigation, and his continued specialty as a highly sought consultant and expert witness on all matters relating to USPTO patent policy, practice, and procedure.

Timothy Maier, Managing Partner of Maier & Maier, commented that “Stephen Kunin has a deep well of knowledge on patent issues, starting with his time at the Patent Office and continuing today. He’ll be an invaluable resource to our firm and his expertise will help us provide our clients with the best service possible.”


Ex Parte Jadran Bandic Sheds New Light On 101 Guidance

The Patent Trial Appeal Board (PTAB) recently reversed an examiner’s 101 Alice rejection in Ex Parte Jadran Bandic, and in so doing, provided insight into how the PTO will administer Director Iancu’s 101 Guidance Memo. The PTAB found the examiner’s analysis in Step One of the Alice rejection only considered limited portions of the claim and did not address whether the claim as a whole amounted to an abstract idea. Despite the fact that the PTAB overruled the examiner’s finding in Step One of the Alice analysis and negated a need to continue their review, the PTAB specifically went on to discuss the merits of Step Two, where they found that “The Examiner’s analysis of the second step of the Alice analysis is conclusory and unsupported.”[1]  This ruling indicates a clear directive that examiners will need to provide detailed explanations and specific supporting evidence to withstand scrutiny on appeal.

After consistent promises made since his nomination, PTO Director Iancu fulfilled those promises last month when he proposed new guidance for patent subject matter eligibility under 35 U.S. 101 in a Federal Registry Notice. The proposal came on the heels of the Federal Circuit’s precedential decision in Berkheimer v. HP Inc., which held that patent eligibility analyses should not group claims together indiscriminately and that eligibility determinations are not solely questions of law, but also questions of fact.[2] The PTO issued a memorandum addressing 101 rejections after the Berkheimer decision which is available for public comments here and will remain open for comments until August 20th, 2018.

Since the Mayo v. Prometheus decision in 2012, where the Court first introduced the phrase “well-understood, routine, conventional activity previously engaged in by researchers in the field,” and the subsequent two-step framework for analysis set out by the Court in Alice in 2014, the exact parameters of patent eligibility under 101 have been under severe scrutiny. The PTO’s current guidance of the Mayo-Alice framework is found in MPEP 2106, directing that examiners “should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.”[3]

Much of Iancu’s career before becoming PTO director came as a litigator, including experience in front of the PTAB. This has lead to a significant amount of interest in the approach he’ll take as PTO Director, and especially with PTAB procedural issues. In a senate hearing last November, Iancu espoused the belief that “[t]o a large extent we should see how the recent development in the case law and some of the recent acts of Congress are working out, and take stock of that.” When the Berkheimer decision came down from the Federal Circuit, he took one of his first opportunities to take such stock.

Berkheimer v. HP, Inc. originated in the Northern District of Illinois with a summary judgment decision on Berkheimer’s 7,44,713 patent concerning digital asset management, after he had sued HP for infringement. The court held claims 1-7 and 9 invalid as ineligible under § 101 and held claim 10 indefinite and claims 11-19 invalid for indefiniteness due to their dependency on claim 10. Berkheimer appealed this decision to the Federal Circuit.

On appeal, Berkheimer argued that the district court had improperly neglected to consider his arguments as to claims 4-7’s validity, because it took arguments towards claim 1 as representative, and failed to apply the correct standard in deciding the validity of claims 4-7 for summary judgment. In its decision, the Federal Circuit determined that the question of whether something is “well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”[4] This means that the decision with respect to claims 4-7 should have been considered “in the light most favorable to the non-movant,” in this case, Berkheimer’s. Therefore, the court decision vacated-in-part and remanded the validity of claims 4-7 to the district court.

This decision addressing § 101 interpretation prompted Iancu to release a memo on the PTO’s additional guidance for examiners issuing rejections under 101. In order for an examiner to ‘readily conclude’ that something is well-understood, routine and conventional, the PTO offers four options for support of that factual finding.[5] The first three possibilities are citations:

1). To an express statement in the specification or to a statement made by an applicant during prosecution, specifically explaining that the finding “cannot be based only on the fact that the specification is silent with respect to describing such element.”

2). To a court decision from MPEP § 2106.05(d)(II) noting the finding.

3). To a publication which notes the finding (book, manual, review article, that “describes the state of the art and discusses what is well-known and in common use in the relevant industry”). It should be noted that the definition of publication here is not defined the same as a printed publication under 102, because 102 requires only 1 publication of the idea, whereas “well-understood” would require further evidence of its prevalence in the field.

4). Lastly, the memo provided that the examiner may take official notice of the well-understood, routine, conventional nature of the elements, but this is limited to situations where an examiner is certain of such nature, and should be done in accordance with MPEP  § 2144.03. If the applicant challenges the official notice in the manner allowed per the MPEP, then the examiner would in turn need to cite to one of the other three options.

With Ex Parte Jandran Bandic, the PTAB has given more insight into how they will be implementing this emphasis on factual findings for Step Two. The patent at issue covers an “analytic method of tissue evaluation,“ with the rejected claims addressing optomagnetic fingerprinting. The examiner rejected those claims because they amounted to “mere data-gathering” and “optomagnetic fingerprinting itself is disclosed in disclosures dating back to 2008”. In reversing this decision, the PTAB noted that the examiner failed to “persuasively explain why [the claims] are steps of “data gathering” and took issue with the fact that the examiner failed to provide any citations for the claim that optometric fingerprinting has been disclosed in prior art since 2008. Additionally, the PTAB referenced the Berkheimer decision and emphasized that an appearance of an element in a “prior disclosure is not adequate to show that the additional element would not be an activity sufficient to transform a claim into a patent-eligible application of an abstract idea”.[6]

This PTAB ruling provides some much needed insight into the level of scrutiny that will be placed on Step Two moving forward, and bears watching as we continue to get more decisions under Iancu’s post-Berkheimer 101 Memo PTO.


[1] Ex Parte Jadran Bandic, Dec. at 6 (PTAB April 30, 2018) (available at https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016004417-04-30-2018-1).

[2] 881 F.3d 1360 (Fed. Cir. 2018).

[3] PTO Notice, Fed. Reg, April 20, 2018 (available at https://www.federalregister.gov/documents/2018/04/20/2018-08428/request-for-comments-on-determining-whether-a-claim-element-is-well-understood-routine-conventional).

[4] Berkheimer v. HP Inc, 881 F.3d 1369 (Fed. Cir. 2018).

[5] PTO Notice, Fed. Reg, April 20, 2018 (available at https://www.federalregister.gov/documents/2018/04/20/2018-08428/request-for-comments-on-determining-whether-a-claim-element-is-well-understood-routine-conventional).

[6] Ex Parte Jadran Bandic, Dec. at 6 (PTAB April 30, 2018) (available at https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016004417-04-30-2018-1).


Supreme Court Upholds IPR Proceedings; Rejects Partial Institutions

Two Supreme Court Decisions came down April 24, 2018 with potentially significant impacts on patent practice. First, in Oil States v. Greene’s Energy, the Court rejected Oil States’ Article III and 7th Amendment challenges to inter partes review (IPR) proceedings, declaring the proceedings constitutional under the public rights doctrine. Second, the Court ruled that Patent Trial and Appeal Board (PTAB) Final Written Decisions must address the patentability of all challenged claims if an IPR is instituted in SAS Institute v. Iancu, eliminating partial institutions.

Oil States Energy Services v. Greene’s Energy Group

After Oil States Energy Services sued Greene’s Energy Group for infringement in federal district court, Greene’s Energy challenged the patent at the PTAB, successfully arguing the patent was invalid. Oil States then appealed the decision to the Federal Circuit, challenging both the decision and the constitutionality of IPR proceedings at the PTAB as a whole. Oil States argued that patents were a private right and that actions revoking a patent must be limited to Article III courts before a jury, and alternatively that the Seventh Amendment requires a jury trial as patent validity was traditionally decided by a jury. Attempting to distinguish IPR proceedings from re-examination proceedings, which have previously been ruled constitutional, Oil States pointed out how the adversarial process of IPR proceedings mimicked the procedure of Article III courts, while re-examination mimicked the prosecution process at the PTO.

The Court’s 7-2 decision to uphold rested primarily on the finding that because patent rights are public rights, reconsideration of those rights need not be reviewed in an Article III court. Public rights are those “arising between the government and others, which from their nature do not require judicial determination and yet are susceptible of it.”[1] The Court then explained that to whatever extent patent rights are granted to a patent holder, they are statutory rights which cannot exceed the scope allowed by statute. The Court reasons that since the AIA is a statutory limitation of the patent rights, any rights granted to the patent owner are granted subject to continual review by the PTO and possible revocation.[2] Based on this construction reserving review for the PTAB, the Court resolved the Seventh Amendment challenge as moot, since it only applies when Congress has not properly assigned a matter to adjudication outside of an Article III tribunal.

Justice Gorsuch, joined by Justice Roberts, dissented from the opinion, specifically objecting to the conflation of the constitutional power of the executive to issue patents with the power to also revoke patents. He concludes his detailed history of the difference between those powers with an appeal to Article III’s purpose, explaining that “enforcing Article III isn’t about protecting judicial authority for its own sake. It’s about ensuring the people today and tomorrow enjoy no fewer rights against governmental intrusion than those who came before. And the loss of the right to an independent judge is never a small thing.”[3]

Despite these concerns, the Oil States decision has assured that any patent rights enjoyed today and tomorrow will be subject to review at the PTAB.

SAS Institute v. Iancu

SAS Institute challenged all 16 claims in ComplementSofts’s software patent in an inter partes review proceeding before the Patent Trial and Appeal Board (PTAB).  The PTAB instituted review on only some of the claims (claims 1 and 3-10).  The PTAB found claims 1, 3, and 5-10 invalid in the Final Written Decision, only upholding the validity of claim 4. SAS appealed this decision to the Federal Circuit, objecting to the PTAB’s failure to address all 16 challenged claims. The Federal Circuit upheld the PTAB in a 2-1 decision, which the Supreme Court has now reversed 5-4.

The majority relies on the plain language of the statute, the America Invents Act (AIA), in its ruling that the PTAB must address all challenged claims once it institutes an IPR. Justice Gorsuch, the author of the majority opinion, declared, “The statute, we find, supplies a clear answer: the Patent Office must ‘issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.’ In this context, as in so many others, ‘any’ means ‘every.’”[4]

This holding will impact the PTAB’s procedures, taking away their discretion to partially deny institution on individual challenged claims where they do not find a ‘reasonable likelihood of success”. Justice Ginsburg emphasizes efficiency as a concern in her dissenting opinion, rhetorically asking “Why should the statute be read to preclude the Board’s more rational way to weed out insubstantial challenges?. . . the Court’s opinion offers no persuasive answer to that question, and no cause to believe Congress wanted the board to spend its time so uselessly.”[5]

The removal of the PTAB’s current institution practice puts Director Iancu’s plan for issuing updated procedural guidance to the PTAB in the spotlight moving forward, and emphasizes the importance of the multiple patent reform bills currently being debated in Congress as potential solutions.

Meanwhile, the Court has remanded this case to be decided in accordance with their statutory interpretation, and the outcome will bear watching as it continues.


[1] Ex parte Bakelite Corp., 279 U. S. 438, 451 (1929).

[2] Oil States Energy Services v. Greenes Energy Group, Slip Op. at 10-11. (April 24, 2018).

[3] Oil States Energy Services v. Greenes Energy Group, Slip Op. at 12. (April 24, 2018) (Justice Gorsuch, dissenting).

[4] SAS Institute v. Iancu, Director, United States Patent and Trademark Office, Slip Op. at 1 (April 24, 2018).

[5] SAS Institute v. Iancu, Director, United States Patent and Trademark Office, Slip Op. at 1 (April 24, 2018). (Justice Ginsburg, dissenting)