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24 April 2018Patents

SCOTUS: PTAB must assess all challenged claims in IPRs

In a much-awaited judgment, the US Supreme Court has confirmed that the Patent Trial and Appeal Board (PTAB) cannot choose to review only some challenged claims in an inter partes review (IPR)—it must assess them all.

The Supreme Court delivered its 5-4 ruling in SAS Institute v Iancu today, April 24.

The judgment invites a departure from current practices employed by the PTAB and confirms that the board must assess the validity of every challenged patent claim when it agrees to an IPR.

In 2014, software company SAS Institute filed a petition for an IPR of a patent owned by software development firm ComplementSoft. The IPR challenged each of the patent’s claims, but the PTAB opted to review only some.

The board found that all but one of the claims it reviewed were invalid. However, SAS Institute appealed against the decision and argued that the board should address the patentability of every challenged claim when it agrees to an IPR.

The US Court of Appeals for the Federal Circuit affirmed the board’s decision regarding IPR procedure in June 2016, and SAS Institute appealed again.

In May 2017 the Supreme Court agreed to hear the matter, accepting SAS Institute’s petition for a writ of certiorari. The dispute centred on section 35 of the US Patent Code and the procedure surrounding IPRs.

In particular the Supreme Court was asked to consider whether the America Invents Act (AIA), which created the PTAB at which IPR disputes are heard, can allow an IPR to be partially instituted or whether the board has to honour an entire claim.

Partial institutions would allow the PTAB to consider the patent claims that it chooses in any given dispute, rather than all of the claims which have been challenged.

The US Department of Justice argued that the PTAB’s process streamlines appeals and said that nothing in the AIA precluded the review of just some claims of a patent during an IPR.

Today, the Supreme Court said the PTAB’s “partial-decision process” went against the aims of the AIA, which included making reviews an efficient alternative to court litigation.

It confirmed that the AIA’s text is “mandatory and comprehensive”: if the PTAB agrees to review a matter, it must decide on the validity of all claims challenged.

The “‘partial institution’ power appears nowhere in the statutory text”, it added, so the argument that partial institution is efficient should be “properly addressed to Congress” rather than the court.

Four dissenting judges referred to the likely purposes of the AIA statute and gave the opinion that Congress would have intended the board to have the discretion to determine which claims had a “reasonable likelihood of success” and therefore “avoid wasting the board’s time and effort”.

They noted that patent office regulations allow the board to proceed with the IPR of some challenged claims, but not others.

The Supreme Court reversed the ruling of the appeals court and remanded the matter for further proceedings consistent with its opinion.

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More on this story

Patents
28 November 2017   The US Supreme Court heard oral arguments yesterday in a case between software company SAS Institute and the Patent Trial and Appeal Board over the inter partes review.
Patents
25 April 2018   Limiting the discretion of the Patent Trial and Appeal Board in relation to inter partes reviews is a game-changing decision which creates a procedural “mess”, one lawyer has claimed.