Rubén Muñoz Quoted in Technology Transfer Tactics on Supreme Court’s PTAB Rulings
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Rubén Muñoz, a partner in the intellectual property practice at Akin Gump, has been quoted in the Technology Transfer Tactics article “SAS decision could have chilling effect on university licensing,” which examines two recent Supreme Court decisions pertaining to the Patent Trial and Appeal Board (PTAB).
The article reports that the Court, in Oil States Energy Services v. Greene’s Energy Group, ruled that inter partes reviews (IPRs) do not violate Article III of the Seventh Amendment to the Constitution and left the PTAB intact. In SAS Institute v. Iancu, the Court found that the PTAB’s practice of instituting review of only some challenged claims violated the law that requires it to decide the patentability of all claims challenged in a petition.
Muñoz said the Oil States decision essentially confirms the constitutionality of IPR proceedings, though it does not completely rule out any future challenges. With the Court hinting at two possible routes that petitioners might still pursue—violations of due process or the takings clause—Muñoz thinks, “Someone is going to take that hint and bring those forward as challenges in the future. So I don’t think we’ve heard the last of Constitutionality challenges to IPR proceedings.”
For universities seeking to address patent challenges, Muñoz said IPRs will now be a binary decision—either yes or now, rather than one answer on some claims and no decision on others. “This is not good news for universities,” he said, “because now all the claims are at risk.”
For those claims that do survive after a final written decision, Muñoz said, “they seem pretty well bulletproof from the validity being challenged in district court litigation. That should give some certainty to patent owners, including universities.”
Looking ahead, Muñoz said it will be interesting to see how the SAS ruling will be implemented. There is good reason, he concluded, “to think [the Patent and Trademark Office’s] decisions are going to be less detailed now,” with the Supreme Court ruling that all claims have to be included in its decisions.
