Supreme Court Grants Cert In SAS To Decide Required Scope Of PTAB Decision

23 May 2017 PTAB Trial Insights Blog
Author(s): Courtenay C. Brinckerhoff

On May 22, 2017, the Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, where it has been asked to decide whether the PTAB is statutorily required “to issue a final written decision as to every claim challenged by the petitioner.” The Court’s decision will be important to IPR petitioners and patent owners alike, and could impact the scope of IPR proceedings, the PTAB’s ability to complete them within the statutory time period, and–indirectly–the scope of estoppel that could arise from an IPR proceeding.

What Does The Statute Require?

The statute at issue is 35 USC § 318 (a) which states:

(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).

The underlying Federal Circuit decision was issued in SAS Institute, Inc. v. Complementsoft, LLC,  where the court found that SAS’s argument that “the Board erred by not addressing in the final written decision every ’936 patent claim SAS challenged in its IPR petition” was foreclosed by its then-recent decision in Synopsys, Inc. v. Mentor Graphics Corp. In that case, the court determined that 35 USC § 318 only requires the PTAB to render a decision on “claims as to which review was granted,” i.e., claims as to which inter partes review was instituted.

The Federal Circuit found support for its decision in differences between the phrase “any patent claim challenged by the petitioner” in § 318(a) and the reference to “claims challenged in the petition” in 35 USC § 314(a), which states:

The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

The court also reasoned:

[T]he statute would make very little sense if it required the Board to issue final decisions addressing patent claims for which inter partes review had not been initiated.

Please see this article for a more complete discussion of the Federal Circuit decision in Synopsis.

When Will The Supreme Court Decide?

I won’t attempt to predict the Court’s decision without the benefit of full briefing–and even then would be going out on a limb–but if this case follows a typical schedule, it will be argued during the Court’s next term and decided by June 2018.

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