United States: Supreme Court To Review Policy Of Partial Institution Of Inter Partes Reviews

The Supreme Court recently granted certiorari1 and will review Patent Trial and Appeal Board (PTAB) practice involving instituting review on fewer than all patent claims challenged in an inter partes review (IPR)2 petition. Typically, petitioners challenge multiple claims on multiple grounds, and the PTAB often decides to institute review of a subset of the challenged claims. At issue before the Court is interpretation of a provision of the America Invents Act3 (AIA) that directs the PTAB, in an IPR, to "issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner." On appeal, the Court will determine whether the PTAB's practice of instituting review on fewer than all patent claims challenged is appropriate, in view of the AIA.

SAS Institute Inc. v. Lee originated from an IPR petition that challenged all 16 claims of Complementsoft LLC's US Patent No. 7,110,936. The PTAB instituted review on claims 1 and 3–10, denying review of claim 2. The PTAB ultimately issued a final written decision finding claims 1, 3, and 5–10 unpatentable, and claim 4 not unpatentable. SAS did not challenge the PTAB's decision to partially institute review until a request for rehearing of the final written decision, which the PTAB denied. On appeal, the Court of Appeals for the Federal Circuit, following Synopsys, Inc. v. Mentor Graphics Corp.4, held,

"Section 318(a) only requires the Board to address claims as to which review was granted." Id. at 1316–17. We found it significant that § 318(a) describes "claims challenged by the petitioner," whereas the institution decision statutory subsection, 35 U.S.C. § 314, describes "claims challenged in the petition." We reasoned that the differing language implies a distinction between the two subsections such that § 318(a) does not foreclose the claim-by-claim approach the Board adopted there and in this case. Further, we upheld the validity of a PTO-promulgated regulation authorizing the claim-by-claim approach. Id. at 1316 (validating 37 C.F.R. § 42.108, which "authorize[s] the review to proceed on all or some of the challenged claims").5

Judge Pauline Newman dissented, addressing several concerns, including: (1) allowing the PTAB to "pick and choose" claims to review increases litigation because estoppel will not apply to the unadjudicated claims; (2) the majority's holding "improperly immunizes" the PTAB's nonappealable, preliminary patentability findings; and (3) the holding makes the decision on institution "a short-cut to final judgment."6 SAS then petitioned for certiorari, largely relying on Judge Newman's arguments.

In response, the Patent Office makes two basic arguments. First, 35 USC  Sec. 314(d) states that the PTAB's decisions on institution are "final and nonappealable." Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2139 (2016). Second, the Patent Office's interpretation of the statute is correct, or at least deserving of deference as reasonable under Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).

However the Supreme Court decides the case, the result will likely be a mixed bag for both patent owners and petitioners. For petitioners, expanded final written decisions will also expand estoppel to attach to all challenged claims. Patent owners could benefit from expanded estoppel; however, petitioners may be able to persuade the Board through the course of a trial that claims that would previously not have been reviewed are in fact unpatentable. In addition, courts will be more likely to stay litigation if all claims at issue in litigation are undergoing review by the PTAB.

This decision may reach farther than the particular question at hand. For instance, the Court of Appeals for the Federal Circuit is currently considering, en banc, whether certain other issues from decisions on institution are appealable. Wi-Fi One v. Broadcom, appeal no. 15-1944 (2017). The Supreme Court's decision in SAS may affect the outcome of Wi-Fi One, and any other case involving appeal of decisions on institution.

Those involved in IPR and similar proceedings should consider how SAS might affect their case. If you are involved in an IPR, and the Board decided or decides to institute on fewer than all claims, then you can consider challenging the Board's decision to not institute on some claims. Patent owners may want to appeal a partial institution if they feel strongly that the petitioner's analysis was deficient, so that estoppel would apply to the petitioner for all challenged claims. Petitioners should consider whether the PTAB's rationale for denying institution was incorrect; if so, it should consider appealing the denial of the non-instituted claims.

Dentons' IPR team will gladly assist you in analyzing your particular situation and crafting an appropriate strategy that accounts for the potential outcomes of SAS, as well as other recent developments in this rapidly evolving area.


1 Supreme Court docket no. 16-969.

2 This issue also applies to other Patent Office trials, i.e., post-grant reviews (PGRs) and proceedings for covered business methods (CBMs).

3 35 U.S.C. § 318(a).

4 814 F.3d 1309 (Fed. Cir. 2016) (J. Newman dissenting).

4 Note that the Federal Circuit also remanded the PTAB's finding that claim 4 was not unpatentable.

6 Pet. for certiorari, pp. 7–8.

Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries. www.dentons.com.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
29 Aug 2018, Conference, Cape Town, South Africa

Dentons is proud to sponsor and present at Africa's most comprehensive event on audit, risk and governance.

29 Aug 2018, Other, San Jose, Costa Rica

Costa Rica will host the Cyberspace Camp® for the first time, a bootcamp that combines law and technology at the hands of ITechLaw.

Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions