Boardside Chat: SAS, MTAs, Fintiv, and Indefiniteness, PTAB Litigation Blog

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On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials.

First, Vice Chief Judge Michael Tierney discussed what he called the “SAS Rules Package”— a United States Patent and Trademark Office (“USPTO”) final rule issued on December 9, 2020 that made three revisions to the rules governing the PTAB’s institution decisions in AIA trial proceedings.  The first revision implements the U.S. Supreme Court’s holding in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)—that when the PTAB is deciding whether to institute inter partes review (“IPR”), the PTAB has a binary choice between instituting review of all the claims challenged (and all of the grounds of unpatentability) in the petition or instituting review of none of the claims. 

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