Congress created inter partes review (IPR), 35 USC 311-319, to allow a party to challenge the validity of a patent under 35 USC 102 and 103 based on prior art patents and/or publications at relatively low cost in the US Patent Office.
If the party can prove a reasonable likelihood of success of showing the invalidity of at least one claim, the USPTO should institute an IPR.
All patents are eligible for an IPR challenge, but if the patent's earliest effective filing date is on or after March 16, 2013, the IPR must be filed later of the nine month period following issuance of the patent and termination of any post-grant review.
In SAS Institute Inc. v. Iancu, the US Supreme Court addressed a practice of the USPTO to institute an IPR on part of the challenged claims. In SAS, the Supreme held when the USPTO institutes an inter partes review to consider the validity of an issued patent the USPTO must decide the patentability of all the challenged claims. In other words, if PTAB institutes an IPR, it can’t just review the claims that meet the threshold for institution, but must review all of the challenged claims.
My comment is SAS forces careful selection of the patent claims to be challenged, because a written decision that a challenged claim is patentable, may raise an estoppel against further challenge of the claim on the same grounds or grounds that could have been reasonably raised.
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