US Supreme Court hears SAS Institute case on IPR
The US Supreme Court heard oral arguments yesterday in a case between software company SAS Institute and the Patent Trial and Appeal Board (PTAB) over the inter partes review (IPR).
The case examines section 35 of the US Code, which provides that the PTAB in an IPR “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner”.
At issue is whether the PTAB is required to issue a final written decision on every claim challenged by the petitioner, or whether it can provide such a ruling on the patentability of only some of the claims challenged by the petitioner, as the US Court of Appeals for the Federal Circuit held.
“Justice Samuel Alito questioned whether the language in the statute was ambiguous, and whether, if read in isolation, the language truly limited the scope of final decisions to only those claims on which the PTAB institutes an IPR, rather than ‘any claim raised by the petitioner,’” explained Jeff Kelsey, partner at Barnes & Thornburg.
He added: “Several of the justices noted the broad discretion given to the PTAB regarding the institution of an IPR and they questioned whether it was reasonable to believe that in this one area the PTAB has no discretion and must address any and all of claims raised by the petitioner.”
Gregory Castanias, who petitioned on behalf of SAS Institute, explained to Justice Sonia Sotomayor what he was challenging.
He said he was asking the board to say in its final written decision that “we are not finding, for example, claim 4 of the ComplementSoft patent” unpatentable, as the board found in this case. “That way, we can then appeal that decision,” he explained.
The case stems from a dispute between SAS Institute and its rival ComplementSoft, which owns US patent number 7,110,936, “A method for generating and maintaining computer code”.
SAS filed an IPR, arguing the patent should be invalidated as it included “elements that were well known in the prior art before the filing date of the ‘936 patent”.
The board instituted an IPR proceeding on some, but not all, of the ‘936 patent claims challenged in SAS’s petition. It ultimately found all of the instituted claims, except for claim 4, unpatentable.
Upon appeal, a three-judge panel at the Federal Circuit upheld the PTAB’s decision, stating that there is “no statutory requirement that the board’s final decision address every claim raised”.
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