Last week, the U.S. Supreme Court heard oral arguments in two
patent cases concerning IPRs. The first case (Oil States Energy
Services v. Greene's Energy Group) has garnered much of
the attention because it concerns the constitutionality of IPRs,
but the second case (SAS Institute Inc. v. Matal) may
actually have a bigger impact on how IPRs work. In SAS,
the Supreme Court considered the PTAB's practice of selecting
which challenged claims it reviews, rather than, once it institutes
a trial, issuing a final decision on the patentability of all
claims challenged in the petition. The oral arguments suggest how
the Justices are approaching the case.
Petitioners and patent owners both have reason to dislike the
PTAB's practice of reviewing only some of the challenged claims
in an IPR petition. For patent owners, partial institution means it
may face further challenges to the claims that the PTAB declined to
review, since the petitioner is often not barred from
