United States: U.S. Supreme Court To Decide Whether PTAB Is Required To Determine Patentability Of All Claims Challenged In An IPR Petition

Last Updated: May 31 2017
Article by Brian S. Mudge and Clifford A. Ulrich

On May 22, 2017, the United States Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, agreeing to decide whether the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office is required to issue a final written decision with respect to patentability of all claims challenged in a petition for inter partes review (IPR) or whether it may issue a final written decision with respect to only some of the claims challenged in the petition. The case may significantly affect how the PTAB handles IPR proceedings.

By way of background, on March 29, 2013, SAS Institute filed a petition for IPR of U.S. Patent No. 7,110,936, challenging patentability of all sixteen claims.1 In its institution decision, the PTAB instituted IPR of claims 1 and 3 to 10 on certain grounds, declined institution of IPR of claims 1, 3, and 5 on other grounds, and declined institution of IPR of claims 2 or 11 to 16 on any ground. Throughout the IPR proceeding, SAS maintained that it was improper for the PTAB to institute an IPR on some claims but not on all of the claims challenged in the petition, asserting arguments in its merits reply2 and a request for rehearing.3>

According to SAS, if the PTAB decides to institute an IPR, it is obligated by statute to issue a final written decision on patentability of all of the claims challenged in the petition, relying on the statutory language of 35 U.S.C. § 318(a): "If an inter partes review is instituted ..., the Patent Trial and Appeal Board shall issue a final written decision with respect to patentability of any patent claim challenged by the petitioner." In its decision denying rehearing, the PTAB took an opposing view, on the ground that it did not institute trial on claims 2 and 11 to 16.4

SAS appealed to the Federal Circuit, identifying "the PTAB's error under 35 U.S.C. § 318(a) in failing to issue a final written decision with respect to the patentability of all of the '936 patent claims challenged by SAS in the inter partes review petition, including claims 2 and 11-16 of the '936 patent" among the issues on appeal. The Federal Circuit rejected SAS's argument. According to the Federal Circuit, there is "no statutory requirement that the Board's final decision address every claim raised in a petition for inter partes review," and 35 U.S.C. § 318(a) "only requires the Board to address claims as to which review was granted," citing its prior Synopsys decision on the same issue raised by SAS.5 The Federal Circuit subsequently denied SAS's requests for panel rehearing and en banc rehearing.

The Supreme Court's decision on whether or not the PTAB has the authority to limit IPR proceedings to a subset of claims challenged in an IPR petition could have significant impact. Since the inception of IPRs, approximately 30% of all institution decisions have been so-called "partial" institutions where trial was instituted on fewer than all claims or grounds challenged in the petition; and of those decisions where trial was instituted, partial institutions comprise over 40%. A ruling by the Supreme Court in favor of SAS would mean that all challenged claims will be addressed in a final written decision and, thus, subject to statutory estoppel. Such a ruling could also result in changes to how the PTAB approaches institution decisions. Currently, the PTAB renders a decision on each claim in the petition, and only grants institution (on a claim-by-claim basis) for each claim that it determines meets the required threshold; for IPRs, the threshold is "a reasonable likelihood that the petitioner would prevail." But if required to address all challenged claims in a final written decision, the PTAB may choose to limit discussion in the institution decision to only a single claim as necessary to institute IPR.


1 SAS Institute, Inc. v ComplementSoft, LLC, IPR2013-00226 (petition filed Mar. 29, 2013).

2 Id., Paper No. 24 (Feb. 12, 2014).

3 Id., Paper No.39 (Sept. 5, 2014).

4 Id., Paper No.40 (Nov. 10, 2014).

5 SAS Institute, Inc. v ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016), citing Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016).

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