Now that IPRs have been upheld as constitutional, is it business as usual at the PTAB?
In many ways, yes. There is a 25-day window for seeking rehearing of the Court’s decision.1 Until that window closes without a rehearing request, or until the Court rules on any filed rehearing requests, Oil States is subject to revision. But the Supreme Court rarely grants rehearing requests, and when they do, they rarely change the result. It is unlikely that the Court will change its finding of constitutionality under Article III and the Seventh Amendment, so pending PTAB cases are likely to continue as usual. Additionally, the PTAB has declined to stay IPR trials pending release of the Oil States decision;2 therefore, it is also unlikely that they would grant any requests for stay pending rehearing of this decision.
Any adjustments to PTAB practice are more likely to flow from SAS Institute v. Iancu, which is a decision the Supreme Court issued on the same day as Oil States. That case held that the PTAB’s Final Written Decision must address every claim challenged by a petitioner, reversing the PTAB’s practice of issuing partial institution decisions and corresponding partial Final Written Decisions. But from an Article III/Seventh Amendment standpoint, the PTAB is likely to continue operating with little change.
[1] Rules of the Supreme Court of the United States, Rule 44 (“Any petition for the rehearing of any judgment or decision of the Court on the merits shall be filed within 25 days after entry of the judgment or decision unless the Court or a Justice shortens or extends the time.”).
[2]See, e.g., Apotex Inc. v. Novartis AG, IPR2017-00854, 2017 WL 3835955, at *3 (PTAB Aug. 30, 2017).