Jenner & Block

Partner Michael Babbitt Comments on US Supreme Court Patent Decisions

Jenner & Block Partner Michael G. Babbitt is quoted in IP Watchdog on the impact of the US Supreme Court’s decisions in two high-profile patent cases.  
In its opinion for SAS Institute v. Iancu, the Court held that the US Patent Trial and Appeal Board (PTAB) must decide all claims a petitioner has challenged in an inter partes review (IPR).  The Supreme Court issued its opinion the same day that it ruled in another patent case, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, in which the Court upheld the constitutionality of the IPR process. 
“The Oil States decision is what we expected,” Mr. Babbitt says in the article, adding that the decision “solidifies the IPR scheme but does not upend current PTAB practices.  The SAS decision is more interesting and may lead to some uncertainty, at least in the short term.” 
“It is unclear how the PTAB will react to SAS, particularly at the institution stage,” says Mr. Babbitt.  “If the PTAB writes institution decisions addressing each and every challenged claim, then that will mean more work for the PTAB.  If the PTAB now writes institution decisions addressing only one claim, as permitted by SAS, then it will conserve judicial resources but provide less guidance to the parties at the outset of trial.” 
Mr. Babbitt focuses his practice on complex civil litigation involving intellectual property and technology and is a registered patent attorney before the PTAB.  He is a member of the firm’s Patent Litigation and Counseling and Technology Litigation Practices.