Supreme Court Will Decide Whether the PTAB Must Address All Claims Challenged in a Petition

Written by Nathanael Luman, Ph.D. and Kerry S. Taylor, Ph.D.

The Supreme Court granted a petition for writ of certiorari to address whether the PTAB is required to issue a final written decision with respect to the patentability of every claim challenged by a petitioner in SAS Institute Inc. v. Michelle K. Lee, Case 16-969 (U.S. May 22, 2017).

SAS filed an IPR petition challenging all 16 claims from a patent.  The PTAB instituted trial on a subset of those claims, and eventually issued a final written decision addressing patentability of the subset of instituted claims.  SAS appealed to the Federal Circuit, arguing that the PTAB erred by issuing a final written decision that did not address patentability of every claim challenged in the petition.  The Federal Circuit issued a divided 2-1 decision, with the panel majority affirming the PTAB’s final written decision with respect to its decision to adjudicate patentability for the instituted subset of SAS’s challenged claims.  The panel majority relied on the court’s previous decision on the same issue in Synopsys, Inc. v. Mentor Graphics Corp., 814 f . 3d 1309, 1316-17 (Fed. Cir. 2016).  SAS sought rehearing en banc, which was denied, and petitioned the Supreme Court for writ of certiorari.

On appeal to the Supreme Court, SAS argues that the PTAB is required by statute to issue a final written decision on all claims challenged in a petition.  Specifically, SAS relies on 35 U.S.C. § 318(a), which states “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).”  SAS argues that the plain reading of “any patent claim challenged by the petitioner” requires the PTAB to issue a final written decision on all claims challenged in a petition.

In opposition, the PTO asserts that, by statute, the PTAB may only institute trial if a petitioner demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”  35 U.S.C. § 314(a).  The PTO argues that this statute requires a claim-by-claim analysis, and the AIA should not be interpreted to compel institution of trial on claims a petitioner fails to demonstrate a reasonable likelihood of success.  In addition, the PTO argues that the Supreme Court lacks jurisdiction to address SAS’s appeal because trial institution decisions are not appealable under 35 U.S.C. § 314(d), which states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

The Supreme Court granted cert and will hear argument on this case during the October 2017 term with respect to the following question:

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?

The outcome of the Supreme Court’s opinion in this case may have far reaching ramifications with respect to petition drafting strategies, estoppel considerations, and appeals to the Federal Circuit.