SAS Decision Could Have Chilling Effect On University Licensing

The Supreme Court's decision in SAS Institute v. Iancu represents yet another blow to patent owners, but is an especially troublesome complication for universities and research institutions trying to generate licensing revenue. As obtaining a decision of invalidity may be easier in an inter partes review (IPR) in front of the Patent Trial and Appeal Board (PTAB) than in a case before a federal district court, the Supreme Court's mandate that the PTAB decide the validity of every challenged claim in an instituted IPR may make IPRs even more attractive to potential patent challengers. And as the risk of being pulled into an IPR proceeding can have a deterrent effect on licensing, universities and research institutions may find procuring lucrative licensing agreements for their patents to be even more challenging, requiring innovative negotiation and licensing strategies.