Supreme Court in SAS Institute Inc. v. Iancu Holds that PTAB Must Address All Challenged Claims in IPR Proceedings

By:  Charles R. Macedo, David P. Goldberg and Christopher Lisiewski

On April 24, 2018, the Supreme Court issued a 5-4 decision in SAS Institute Inc. v. Iancu, No. 16-969, holding that “the petitioner in an inter partes review is entitled to a decision on all the claims it has challenged.” Slip op. at 10-11.  The decision reverses the opinion of the US Court of Appeals for the Federal Circuit (“Federal Circuit”) that the PTAB may choose to limit its review and address only some of the challenged claims.

The majority opinion penned by Justice Gorsuch, and joined by Chief Justice Roberts and Justices Kennedy, Thomas and Alito, focused heavily on the plain language of the statute, which provides:

(a) Final Written Decision.—
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).

35 U.S.C. § 318(a) (emphasis added).  Reading “any” as “every” and “shall” as imposing “a nondiscretionary duty,” the majority concluded that 35 U.S.C. § 318(a) provides a “clear” answer.  “[E]verything in the statute before [the Court] confirms that [petitioner] is entitled to a final written decision addressing all of the claims it has challenged and nothing suggests [that the Court] lack[s] the power to say so[.]” Slip op. at 14.

Justice Breyer dissented, arguing that the statute is ambiguous and that the PTO’s interpretation is reasonable and should be upheld.  He explained that, “there is a gap, the agency possesses gap-filling authority, and it filled the gap with a regulation that . . . is a reasonable exercise of that authority.” Breyer slip op. at 10 (Breyer, J., dissenting).  Justice Ginsburg, in a separate dissent, agreed with Justice Breyer and questioned the majority’s narrow and “wooden” reading of the statute. Ginsburg slip op. at 1 (Ginsburg, J., dissenting).

In this key decision, the Supreme Court rejected current PTAB practice to grant partial institutions as ultra vires. Accordingly, from now on, when the PTO institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.

In a follow up announcement by the USPTO, the PTAB will also, at least for now, consider all challenges raised by the Petition in any pending proceeding in which at least one claim is instituted.

* Charles R. Macedo is a Partner, David P. Goldberg is an Associate, and Christopher Lisiewski is a Law Clerk at Amster, Rothstein & Ebenstein LLP.  Their practice focuses on all facets of the intellectual property law, including patent, trademark and copyright.  They may be contacted at cmacedo@arelaw.com, dgoldberg@arelaw.com and clisiewski@arelaw.com.  Mr. Goldberg is the co-chair of the Amicus Brief Committee of the New York Intellectual Property Law Association.