Publications including IP Watchdog and the Kansas City Business Journal looked to Erise IP’s Eric Buresh on news that the U.S. Supreme Court decided two patent cases – the decision in Oil States v. Green Energy found that inter partes review (IPR) is constitutional, and the decision in SAS Institute Inc. v. IANCU Director U.S. Patent and Trademark Office upheld that when the U.S. Patent and Trademark Office institutes an IPR, it must decide the patentability of all challenged claims.
IP Watchdog featured Buresh’s analysis of the decision in the article, “Industry Reaction to Supreme Court Decision in Oil States v. Green Energy.” His comments began: “While Oil States was closely watched for its potential of eliminating IPR proceedings altogether, the Supreme Court’s decision affirming the constitutionality of IPR proceedings is ultimately a non-event that effectively maintains the status quo. If it had come down the other way, the Oil States decision would have had an existential impact on IPR proceedings. As decided, Oil States should not have a meaningful impact on practice before the PTAB. The Supreme Court’s SAS Institute decision, however, will have a multitude of impacts on both practice and strategy before the PTAB.”
The Kansas City Business Journal interviewed Buresh for the article, “Erise founder: U.S. Supreme Court just changed the ballgame for patent law.” On what the future may hold, Buresh told the Business Journal: “I think we may see congressional action to clarify the rules and give the PTAB more discretion going forward, but that is going to take time . . . In the interim, this decision is going to control how the PTAB has to approach (patent review hearings).”