Discussion Board

Supreme Court to Review PTAB Practice of Reviewing Only Selected Challenged Claims

Team Contact: Erin K. Bowles, Andrew B. Turner

SAS Institute Inc. v. Lee, No. 16-969 (U.S. May 22, 2017).

On May 22, 2017, the U.S. Supreme Court granted review in the first patent case accepted for the October 2017 term. The Court granted certiorari to review whether the Patent Trial and Appeal Board’s practice of determining the patentability of some, but not all, claims challenged in a petition for inter partes review violates the America Invents Act.

In this case, ComplementSoft, LLC sued SAS Institute Inc. for infringement of U.S. Patent No. 7,110,936. In response, SAS filed a petition for inter partes review, challenging all 16 claims of the ’936 patent as unpatentable based on either anticipation or obvious. The PTAB instituted review on only nine of the 16 claims, and ultimately issued a final written decision determining that eight of those nine claims were unpatentable. The final written decision did not address the seven un-instituted claims in the patent.

SAS appealed the PTAB decision to the Federal Circuit, arguing that the PTAB improperly based its decision on a claim interpretation different from the one adopted in its decision to institute, and on the grounds that the Board was required to address all challenged claims under 35 U.S.C. § 318(a). As discussed previously, the Federal Circuit ruled that the PTAB erred in relying on a new claim construction without providing adequate notice to the patent owner.But the Federal Circuit ruled that the Board acted within its authority to omit some challenged claims from the final written decision. SAS Institute Inc. v. Lee, 825 F.3d 1341 (Fed. Cir. 2016).

The Supreme Court will hear SAS’ contention that Section 318(a) requires the Board, upon institution of an inter partes review proceeding, to address all challenged claims in the final decision. Section 318(a)states that:

If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d) [permitting amendment of claims during the IPR upon motion by the patent owner].

(emphasis added). SAS contends that the language of Section 318(a) is dispositive, and that piecemeal review of patent claims undermines the AIA’s goal of providing an alternative and efficient mechanism to adjudicate patentability issues.

The question accepted for review by the Supreme Court is:

Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?