David Ruschke Outlines USPTO Reactions to Oil States & SAS Institute


On April 24, 2018, the Supreme Court released the much-awaited decision related to Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). The Honorable David P. Ruschke, Chief Judge for the USPTO Patent Trial and Appeal Board, was on hand to talk with meeting attendees on Wednesday, May 16, 2018, about the intense planning that went on at the USPTO as they awaited the Supreme Court’s decisions for Oil States and SAS. 

In Oil States, the Court ruled that IPRs do not violate Article III of the Constitution; with SAS, the Court ruled that the Patent Trial and Appeal Board (PTAB) must address every claim raised by a petitioner during IPRs, doing away with the current regime to only address the claim challenges that the PTAB determines have a "reasonable likelihood of success."

Chief Judge Ruschke stressed the thoroughness of the agency’s preparedness for the decisions back in April. When asked specifically about how he felt before the Oil States decision, Ruschke replied “I had contemplated every contingency in my head. But [Oil States] didn’t’ scare me. The one that scared me was SAS.” 

He had been in South Korea at the time the decisions were released and was shocked to see that news of the decisions had made it onto CNN’s news ticker. Instantly he knew that despite the good news in Oil States, the agency would have its work cut out for it with SAS. “At a minimum, at least 20% of our cases are affected by the ruling in SAS,” he said. 

Ruschke ended his speech talking about the USPTO’s push to release guidelines; the agency has already released some but remarked that it can take between 12 to 18 months to run through the traditional rulemaking process. But despite these significant challenges, Ruschke and the rest of the USPTO’s leadership, feels confident that the result of these decisions will mean more certainty for the patent system and patent owners.