On December 17, 2018, Adam Hess was quoted in an article in Law360, which looked at some of the biggest patent cases of 2018, including SAS Institute Inc. v. Iancu and WiFi-One LLC v. Broadcom Corp.
In a 5-4 ruling, the Supreme Court held that the PTAB must decide the validity of all challenged claims when it agrees to institute an America Invests Act (AIA) review of a patent, reversing the PTAB's existing practice and forcing litigants to rethink traditional strategies. The ruling in favor of software developer SAS Institute Inc. ended the ability of the PTAB to select which claims to review with the reviews becoming even more expensive. The U.S. Patent and Trademark Office is also proposing to raise the fee for AIA reviews, citing additional work that was created by the SAS Institute ruling, and has proposed to increase the combined fee for inter partes reviews from $30,500 to $38,250 to challenge up to 20 claims, with additional fees for more claims. Litigants may also see higher legal bills and more patent claims being argued and debated.
Mr. Hess said, "Attorneys' fees, expert witness fees, patent office fees — everything will go up as a result of the SAS decision."
In the Wi-Fi One LLC v. Broadcom Corp. ruling, the Federal Circuit cleared the way for more appeals of PTAB decisions on instituting reviews of patents, appeals that in the past were strictly limited. The ruling, which was brought forth over a dispute with a messaging patent, involved the narrow issue of the IPR time-bar, signaling the court was willing to allow other appeals of PTAB decisions to review patents.
"The Wi-Fi One case in and of itself was not that significant on the specific issue they decided," Hess said. "But what was important is that it opened up the ability of appeals with regard to other decisions from the PTAB. That cracked the door, and now you see other issues being raised on appeal."