Two Years After SAS Institute, AIA Review Institution Rates Remain Relatively Unchanged

In April 2018, the Supreme Court’s SAS Institute decision ended the practice of partial institution decisions in America Invents Act (AIA) reviews, under which the Patent Trial and Appeal Board (PTAB) would sometimes institute trial for a subset of the petitioned claims. Now, just over two years later, RPX data indicate that the decision has not significantly affected institution rates, which (as shown below) have remained in roughly the same range as they did previously, hovering between 54% and 65%.

However, SAS Institute has had a marked impact on the PTAB’s workload. USPTO Director Andrei Iancu has confirmed that the SAS Institute has since resulted in “significant additional work” for the Board, and the decision’s added burden was cited as a factor in a 25% increase in AIA trial fees announced in a July 2019 notice of proposed rulemaking. (The final rule has not yet issued.) Practices implemented by the PTAB shortly after the issuance of SAS Institute further increased that burden by establishing that where the petitioner has a reasonable likelihood of success as to at least one claim, the Board will institute trial on all challenged claims and under all asserted grounds for invalidity (going beyond the requirements of SAS Institute). Despite that burden, the USPTO proposed to codify this practice just last month.