Bonum Certa Men Certa

Patent Maximalists Are Using SAS Institute v Iancu to Distract From Their Epic Defeat in the Vastly More Important Oil States

"For a decade, makers of AIDS medicines had rejected the idea of lowering prices in poor countries for fear of eroding profits in rich ones. The position required a balancing act, because the companies had to deflect attacks on the global reach of their patents, which granted exclusive marketing rights for antiretroviral drugs." --Barton Gellman

US flag sketchSummary: As one might expect, law firms don't want pairs of eyes and attention on Oil States, so they start speaking about a far less critical case -- a case that might, under some circumstances, give PTAB even more work

JUST under a decade ago we criticised Florian Müller for all sorts of reasons, half a decade after he had fought software patents. Over the past 3-4 years, owing largely to EPO scandals, Müller and us became amicable again. He's no longer attacking FOSS like he used to (while Microsoft paid him). He's back to software development and he's getting involved in USPTO matters. He wants software patents to go away (virtually all software developers reject software patents).

"Over the past 3-4 years, owing largely to EPO scandals, Müller and us became amicable again. He's no longer attacking FOSS like he used to (while Microsoft paid him).""Someone wrote on Twitter that patent holders had something to celebrate yesterday," he wrote in Twitter a day after Oil States. "Classical spin doctoring?"

Yes.

Both Oil States and SAS Institute v Iancu (formerly SAS Institute v Lee) are about patents. But it's clear which of the two decisions matters a great deal. We cover patents dozens of times per week and rarely do we even mention SAS Institute v Iancu (it's about patents but not so important). Müller went on to writing a whole blog post about it: [via]

Someone wrote on Twitter that patent holders had something to celebrate yesterday: After the Supreme Court's Oil States (7-2 confirming constitutionality of PTAB inter partes review) and SAS (5-4 holding that PTAB must render decision on all challenged patent claims after granting review), patent holders were allegedly in a stronger position than before, which--as the same tweeter (I forgot the name) noted--is rarely the case when the Supreme Court overrules the Federal Circuit as it did in SAS.

Classical spin doctoring? A comparison of the number of amicus briefs filed shows where most of the attention was. 54 briefs in Oil States vs. only [one] in SAS. If patent holders at large had cared a lot about SAS, more of them than just the Intellectual Property Owners Association (amicus brief, PDF) would have chimed in. However, many of those who'd have preferred to have done away with PTAB IPR in the first place presumably welcome anything that adversely affects PTAB's operational efficiency--and even when (as is the case here) it's not easy to predict the fallout, someone who hates PTAB probably just thinks it can hardly get worse from that particular vantage point.


Exactly!

"Both Oil States and SAS Institute v Iancu (formerly SAS Institute v Lee) are about patents. But it's clear which of the two decisions matters a great deal."Over the past few days we've waited patiently and collected examples of this diversion tactic.

At Patently-O, for example, Dennis Crouch wrote that Justice "Ginsberg, joined by the other three most liberal justices, calls Gorsach’s [sic] reading “wooden” and lacking of any true understanding or indication of congressional intent" (Gorsuch is as "wooden" as the Kochs and their think tanks which he cited).

Here's more:

Simplifying petitions decisions: The decision here should simplify the petition institution decisions. Following SAS, the question should simply be whether there is at least 1 challenged claim where the petitioner has presented a “reasonable likelihood” of prevailing on the merits. 35 U.S.C. 314(a).

[...]

Writing in dissent, Justice Ginsberg, joined by the other three most liberal justices, calls Gorsach’s [sic] reading “wooden” and lacking of any true understanding or indication of congressional intent: “Court’s opinion offers no persuasive answer to that question, and no cause to believe Congress wanted the Board to spend its time so uselessly.”


Over a year ago Patently-O worked 'overtime' trying to slow things down at PTAB. It was like a contingency (in case they cannot undermine or altogether eliminate PTAB). Watchtroll, piggbacking SAS Institute v Iancu, is also hoping to slow things down. Its headline from 4 days ago was self explanatory.

This wasn't enough for this patent-maximising pair. They carried on and on.

"We predict that tomorrow, right after the webinar with David Ruschke, the patent microcosm will try as hard as it can to leave Oil States behind, burying it while shouting from the rooftops about SAS Institute v Iancu."Saurabh Vishnubhakat, an Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering,‏ wrote in Twitter: "After 7-2 finding in #OilStates of #PTAB constitutionality, #SCOTUS 5-4 in #SASInstitute rejected partial institution. Court denied @USPTO call for deference at #Chevron step 1: relevant text unambiguous. Oil States: https://bit.ly/2Hq9OSJ SAS Institute: https://bit.ly/2Hq9OSJ"

Guess which decision Saurabh Vishnubhakat decided to write about for Patently-O... not Oil States. Not convenient? Dennis Crouch published for him a long article titled "First Steps After SAS Institute" and to quote:

The incentive of the Patent Office, meanwhile, is likely to deny institution relatively more often in the wake of SAS Institute, at least initially. One reason is that the Court’s opinion has no effect on the PTAB’s ability to grant full institutions. Panels could already do so and still can. What panels now confront is the prospect of fully instituting even where some arguments in the petition may lack merit. Rather than dispense with these potentially unavailing arguments at the institution phase, where estoppel would at least arguably not attach, the only alternative left is to try all of these arguments fully, with all the Chenery obligations that such a choice entails, and the specter of estoppel looming larger than before for the petitioner. This represents a potentially significant increase in the PTAB’s workload and is not something that the Patent Office is likely to undertake lightly.

Another reason why the agency’s incentives now point more, if not entirely, toward denial is the workaround proposed in Justice Ginsburg’s dissent. Only a paragraph in length, it expressly contemplates precisely this sort of full denial of a petition, except that the PTAB in its decision to deny institution would also identify which claims were worthy of review and which claims were not. Petitioners could then refile in light of this guidance. Justice Ginsburg described this exercise as the PTAB spending its time “uselessly”—in contrast simply to allowing partial institutions and reaching the same point without the added step of refiling.

But this is actually a reasonable idea. Just as petitioners themselves now have greater incentive than before to focus their challenges in order to make full institution more tenable than full denial, the PTAB can also play a useful complementary role by explaining in its denials of institution just what it finds worthy or unworthy of review, and why. By channeling petitioners to “file new or amended petitions shorn of challenges the Board finds unworthy,” the PTAB may create additional work in the short run. Over time, however, its guidance would conserve the agency’s adjudicatory resources by discouraging the overinclusive petitioning that partial institution fostered because the PTAB had a way to manage its workload without having to discipline extravagant petitioners.

This is no longer the case, and the PTAB’s own workload is now more closely tied to the burdens that it allows petitioners to visit upon patent owners. The opinion of the Court purported not to take a stance on policy arguments about efficiency, directing such arguments to Congress. Nevertheless, the decision in SAS Institute may produce efficiency gains after all.


It's a very long article overall. Nothing from him (that we can see) about Oil States. Except a "tweet"...

Ellie Mertens, who works for/serves the US patent microcosm, wrote the following:

The US Supreme Court has decided in SAS Institute v Iancu that the PTAB must review all or none of the challenged claims. Observers say the PTAB petitioners could react to the ruling in a number of ways, and it “may increase the number of issues that bubble up to the Federal Circuit”

The US Supreme Court has decided in SAS Institute v Iancu that Patent Trial and Appeal Board (PTAB) must review all or none of the challenged claims.


To be fair, Mertens did write about Oil States as well (we shall cover that separately).

Dennis Crouch, writing again a few days later, resorted to jingoistic patent propaganda from Ross and Iancu. Here they go again:

In a joint statement, Secretary of Commerce Wilbur Ross and Andrei Iancu, Undersecretary of Commerce and USPTO Director, have released a joint statement following upon President Trump’s statements yesterday that the Administration is “tak[ing] steps to strengthen our patent system.” In particular, President Trump focused on increasing “reliability and enforceability of patents.” Following today, Iancu and Ross have announced that “The Department of Commerce and the United States Patent and Trademark Office will be taking steps to further strengthen our patent system” and that our intellectual property rights must be “strong, reliable and predictable.”



Crouch also wrote about "USPTO Guidance for Dealing with SAS Decision" as follows:

The US Supreme Court recently decided SAS Institute Inc. v. Iancu (U.S. Apr. 24, 2018), holding that USPTO has been improperly issuing “partial-institution” and holding AIA trials on only a subset of challenged claims. The USPTO has now issued a one-page introductory guidance memorandum for procedure moving forward.


Here's the original statement. There's a webinar about it tomorrow at 1PM Eastern Time:

The PTAB is holding a “Chat with the Chief” webinar on Monday, April 30 from noon to 1 pm ET about the Supreme Court’s decisions on Oil States and SAS. Chief Judge David Ruschke will discuss the decisions, their impacts on AIA trial proceedings, and answer questions.

The webinar is free and open to everyone to attend. Webinar access information is provided on the left side under Event Summary.


Yes, PTAB's Chief Judge David Ruschke will be there too.

Regarding the guidance, there has been a lot of coverage about it (almost more than about Oil States). Michael Loney, editor of a patent maximalists' site, wrote this summary:

Guidance includes stipulating that for pending trials in which a panel has instituted only on some challenges in the petition, the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition


Guidance in relation to SAS Institute v Iancu was also mentioned by IP Watch, which has not been doing much 'watching' lately (they gave the platform to maximalists). To quote:

The United States Patent and Trademark Office has issued guidance on changes to post-grant proceedings following the 24 April decision by the US Supreme Court in the SAS Institute v Iancu case. The Court ruled that the USPTO must decide the patentability of each claim that is challenged in petitions for inter partes review.


Guidance as such was also noted by Watchtoll, which got all worked up over Oil States and preferred to deflect: (deflection over to SAS Institute v Iancu)

On Thursday, April 26th, the U.S. Patent and Trademark Office issued new guidance regarding the effects of the U.S. Supreme Court’s judgment in SAS Institute Inc. on America Invents Act (AIA) trial proceedings held before the Patent Trial and Appeal Board (PTAB). Along with the new guidance, the USPTO also announced a webinar with PTAB Chief Judge David Ruschke taking place next Monday to further discuss the impact of recent Supreme Court decisions regarding the trial activities conducted at the PTAB.


SAS Institute v Iancu coverage by Kevin E. Noonan, another patent maximalist:

Well, that didn't take long. The U.S. Patent and Trademark Office issued Guidance today, just two days after the Supreme Court decision in SAS Institute Inc. v. Iancu came down, regarding how the Patent Trial and Appeal Board (PTAB) will apply the Court's mandate in that inter partes review (IPR) decisions are all or nothing with respect to challenged claims ("Guidance on the Impact of SAS on AIA Trial Proceedings").

The Guidance is simple: going forward (i.e., for all pending and future-filed petitions), the Board will institute on all challenged claims so long as the petitioner has shown a reasonable likelihood of invalidating at least one of the claims. For cases where the Board has engaged the parties in partial institution proceedings, the Board "may" issue an order "supplementing the institution decision to institute on all challenges raised in the petition." In such cases the Board also has discretion to take action "permitting additional time, briefing, discovery, and/or oral argument." Examples included in the Guidance include granting additional time for the Patent Owner Response or, if the statutory twelve-month time is close to expiry, taking advantage of the additional six months provided by the statute for extraordinary cases. The Guidance stresses however that such decisions will be made on a case-by-case basis.


Patent Docs covered not only SAS Institute v Iancu; as we'll show in our next post, they also mentioned Oil States, but these two decisions were treated almost as equal. They're not. To repeat what Müller said, we have "54 briefs in Oil States vs. only [one] in SAS" (which is quite revealing).

We predict that tomorrow, right after the webinar with David Ruschke, the patent microcosm will try as hard as it can to leave Oil States behind, burying it while shouting from the rooftops about SAS Institute v Iancu. Did Iancu even want to 'win' this case (unlike Lee)?

Recent Techrights' Posts

Lovers and Haters
Always beware hate preachers and demagogues (or how they frame issues or whose fault they distract from)
Punching People Doesn't Work
It makes nobody any safer
This is How Microsoft's XBox and Entire Consoles (If Not Gaming) Ventures Will Ultimately Die
Ensure you can blame "Tariffs" (politics)? If not "hey hi", the fashionable go-to excuse when businesses fail?
 
Links 25/09/2025: French Unions Want Another Strike, Super Typhoon Ragasa Kills Many
Links for the day
Microsoft 'Secure Boot' and Shim as Barrier or Obstacle to New GNU/Linux Users Trying to Escape Microsoft
Just as intended all along
Focusing on What People Have in Common Instead of Killing and Cancelling One Another
Men and women of both "wings" stand to gain a lot by working together on common interests
'Cancel Culture' Isn't About Enforcing Ethics (and It's Done by People on the Right, Not "The Leftists")
Smarter folks would leave social control media
Russia's Attack on Europe (and NATO) Will Worsen Censorship and Corruption in Europe
Can we still debate issues that predate the invasion of Crimea?
Lawyers Should Permanently Lose Their Licence (and Worse) for Using Chatbots in Legal Work
They not only waste people's money and time. They pollute the literature with falsehoods. They commit perjury. [...] Brett Wilson LLP sent the Judge nearly 1,000 pages of material (mostly mine, copied without proper permission) shortly before a short Hearing, which lasted less than an hour
GAFAM and MATA (Mythical, Metaphor) as Explained by analognowhere.com
They're instruments of suppression that sponsor the oppressor
We've Already Mentioned Who Nowadays Funds Garrett's SLAPP Against Us (Not Garrett), Let's Examine Who Sponsored His Litigation Partner (Other Than Microsoft Salaries There's a Buddy of Bill Gates)
it's alleged that the Serial Strangler from Microsoft got money from him
Florian Müller: Using Software Patents to Attack Software Developers, Agitate Against Patent Reform
He also promotes attacks on the German Constitution and laws
Reliance on Typepad Seems to Have Doomed the Voice of Software Patents and Patent Maximalists in PatentDocs
Follow the money
UEFI 'Secure Boot' is Potential Mayhem to the Environment (Older and Leaner Distros Stop Working)
creating new problems, disguised as "solutions" to problems that do not exist
Sometimes 'Cancel Culture' Backfires Badly
There's no such thing as "too much" coverage
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Wednesday, September 24, 2025
IRC logs for Wednesday, September 24, 2025
Links 25/09/2025: Jimmy Kimmel Returns to Air (With Limitations) and London Stansted Airport Latest to Have Incident (Fire)
Links for the day
Slopwatch: Fake Articles, SPAM With Slop, and Google News Directs People to Read Slopfarms
why does Google News insist on still linking to prolific slopfarms?
Gemini Links 25/09/2025: New Game for Gemini Protocol, Eleven, and Network Solutions Woes
Links for the day
Look Ma, No "Cloud"
So far this year we've had an almost perfect uptime
Links 24/09/2025: Autism Blame-Shifting and Typhoon Ragasa Enters China
Links for the day
Buying From Oneself is Not Business Success
This isn't at all a joking matter even if you already laugh at the whole thing because your pension, savings etc. are tied to this scam at some level
What They Really Hate David Heinemeier Hansson (DHH) for
Nothing to do with code
Smart People Won't Buy 'Smart' Cars
Imagine trying to sell someone a house (proper home) while insisting that it'll need to be demolished 5 or 10 years later, then rebuilt again from scratch on the same vacant lot
The Relationship Between IBM Red Hat and Microsoft, Visualised
This metaphor goes a long way (projects, collaborations, and outsourcing
The Complaint About Brett Wilson LLP - Part III - Spying on Reporters' Families, Chaining Cases for Microsoft Employees Who Demand Censorship of Facts (Even Politely Expressed)
the time seems right to wrap up this introductory series
The Complaint About Brett Wilson LLP - Part II - UK SLAPPs for Americans, SLAPPs for Profit
Brett Wilson LLP has a track record of this kind
Cloudflare Gives Us All Another Reason to Boycott Cloudflare
If Cloudflare wants to use its vast surveillance network (which is what it does as a CDN) to foist paywalls and maybe something worse (like DRM on top), then Cloudflare should be more widely rejected as a company
Links 24/09/2025: "NASA Moving Out of Entire Buildings as It's Gutted" and Purge of Online Critics (Opposing Fascism Becomes Unlawful)
Links for the day
Science is Under Attack
Oligarchy prefers a dumbed-down population
Someone Expiring Certificates on the Day of the 9/11 Attacks is Not Someone I Would Want Controlling My PC (or Deciding What's Authorised for Booting)
"social justice warriors"
The Solicitors Regulation Authority (SRA) Has Reportedly Failed People With Wrong Advice
At the moment the SRA has a PR blunder
The Man Suing Brett Wilson LLP and Gervase de Wilde (5RB)
Now he's probably using the (almost) 200,000 pounds he's supposed to receive to sue Brett Wilson LLP and former colleagues/partners
More Microsoft-Red Hat Cross-Pollination as the Company Loses a Managing Director
some people move from Microsoft to Red Hat and some do the opposite
Slopwatch: A World Wide Web That's Rotting for Companies That Won't Even Exist in a Few Years
some of the junk Google News is promoting
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Tuesday, September 23, 2025
IRC logs for Tuesday, September 23, 2025
Links 24/09/2025: Qt Creator 18 Beta, Microsoft Cannot Bail Out "ChatGPT" Anymore, China and US Intensify Censorship
Links for the day
Gemini Links 24/09/2025: Gemlogs and Politics
Links for the day
Links 23/09/2025: Japan Limits Uses of Skinnerboxes ('Smartphones') With Toxic "Apps", Fentanylware (TikTok) Tapped by "MAGAts"
Links for the day
Brett Wilson LLP Has Just Been Sued (by Their Own Clients!)
Vladimir and Alla Yanpolsky sued Brett Wilson LLP in BL-2025-001167 at the end of last week
Mayday: Optus emergency calling crisis
Reprinted with permission from Daniel Pocock
Links 23/09/2025: Massive Data Breach, Slop Versus Productivity, and Vista 11 Update Breaks Things Again
Links for the day
Code of Censorship
Extortion is peace
The Free Software Foundation (FSF) Has Un-cancelled the Best People, Just in Time for the Big 4-0
Mr. Oliva should have been there all along (since 2019)
Most "Modern" Technology Makes You Slower and Dumber
Because proprietary software makes you worse off
"What Comes After Free Software?" Wrongly Insinuates We've Reached the Goal (Prison is Not the Goal)
The oil tycoons use similar tactics against environmentalists, giving them fake "wins"
Making More Work Space
I learned the hard way that less is more in circumstances where more means distraction
MAHA is a Lie, Public Officials Never Valued Citizens' Health (They Still Value Private Businesses, Their Sponsors)
Reject demagogues
Free Software Foundation (FSF) Has a New Press Kit for the Weekend After Next Weekend (40th Anniversary)
miles better than social [sic] media [sic] quips, moderated by narcissists and oil tycoons.
Microsoft Had Two Waves of Mass Layoffs This Month (That We Know of) and It'll Get Worse for Microsoft Soon
Will the axe fall again by month's end?
Gemini Links 23/09/2025: Happy Equinox, Photronic Arts, and Perception Cognition
Links for the day
Lessons We've Learned After 17 Years of American Hosting
GAFAM is "all-in" with the "Trump agenda"
Back to Normal Now, We Plan to Do More In-Depth Series (or Multi-part Stories)
Articles (or series thereof) that contain philosophy are important to us
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Monday, September 22, 2025
IRC logs for Monday, September 22, 2025
Microsoft Media is Panicking Amid Mass Layoffs Every Month, H-1B Fees, and "Seattle’s Tech Scene in Trouble"
In "late stage Microsoft", copyleft becomes proprietary
The Next Wave of IBM/Red Hat Layoffs Being Discussed Already
Red Hat is sort of disappearing the way Tivoli did
New Techrights Turns 2
Today starts the third year of the SSG-based Techrights