Oil States, SAS and the Future of IPRs: An Assessment of Challenges to Inter Partes Review Presently before the Supreme Court

April 23, 2018 10:15am

Lisa M. Ferri
Mayer Brown LLP (New York, NY)

Rekha Hanu Ph.D., Esq.
Executive Director, Chief IP Counsel
Akorn Pharmaceuticals (Lake Forest, IL)

Irene E. Hudson
Baker & Hostetler LLP (New York, NY)

Rudolf E. Hutz
Reed Smith LLP (Wilmington, DE)

David Silverstein M.S., J.D.
Axinn, Veltrop & Harkrider LLP (New York, NY)(Former Senior Director, Intellectual Property, Par Pharmaceutical, Inc)

Andrea Tiglio
Assistant General Counsel, IP, Legal
Astellas US LLC (Northbrook, IL)


John T. Gutkoski
Barclay Damon LLP (Boston, MA)

At time of press, the SAS and Oil States cases are still pending before the Supreme Court. Whether you are the patent holder or a patent challenger, these cases will have a tremendous impact on your approach to PTAB practice. In SAS, the Court will decide whether the PTAB must issue a written decision covering all claims challenged in an IPR. While in Oil States, the Court must decide on the question of the Constitutionality of these proceedings altogether. It just may be the end of the world, as we know it. This panel will explore the status and possible impact of these pending decisions. Points of discussion will include:

  • Analyzing prior juris prudence as to why a judicial body must address every claim in a petition
  • Anticipating the Court’s view in Oil States on whether an IPR represents an unconstitutional taking
  • Exploring separation of powers in the seventh amendment arguments, brought forth under Oil States
  • Developing interim jurisdictional strategies while these cases are pending
  • Understanding how these decisions will impact ANDA litigation and your practice
    • Implementing brand name and generic strategies