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SAS Institute Inc. v. Iancu

PTO May Not Partially Institute IPR; Upon Institution Written Decision Required for All Claims Challenged in Petition

SAS Institute Inc. v. Iancu, __ U.S. __, 2018 WL 1914661 (Apr. 24, 2018) (Opinion by GORSUCH, J. (joined by Roberts, C.J., and Kennedy, Thomas, and Alito, JJ.); dissent by Ginsburg, J. (joined by Breyer, Sotomayor, and Kagan, JJ.); dissent by Breyer, J. (joined by Ginsburg and Sotomayor, JJ.; partially joined by Kagan, J.)) (Fed Cir (825 F.3d 1341): Newman (CIP/DIP), Chen, STOLL) (PTAB) (5 of 5 stars)

Supreme Court reverses Fed Cir. In instituting an IPR proceeding, the Patent Office must resolve all claims in the petition; it may not “curate the claims at issue[.]” Op. at 1. The opinion reasons that § 318(a) is “both mandatory and comprehensive” in requiring that the Board issue a final decision as to “any patent claim challenged by the petitioner.” Op. at 4. The opinion rejects the PTO’s contention that its obligation to issue decisions includes discretion to decide that some claims do not gain access to the review process. Such a contention lacks support in the statute, particularly in comparison to the EPRx statute (§ 303(a)), which expressly gives more discretion to the PTO. And § 314(b) makes the PTO’s decision on whether to institute a “binary choice—either institute review or don’t.” Op. at. 7. § 314(a)’s requirement that the PTO determine that there is a reasonable likelihood of the petitioner prevailing on “at least 1” of the petition’s challenged claims means that the PTO should institute on all claims as soon as it determines a likelihood of prevailing on one. The opinion also rejects the PTO’s policy argument that partial institution enhances efficiency; such disputes must be resolved by Congress. And Chevron, 467 U.S. 837 (1984), does not support the PTO because the statute is not ambiguous. Finally, the opinion rejects the PTO’s argument that § 314(d)’s provision against appeal of institution decisions bars judicial criticism of the PTO’s partial institution practice. As noted in Cuozzo, 579 U.S. ___ (2016), § 314(d) does not permit the PTO to act outside its statutory authority.

Dissent (Ginsburg): Justice Ginsburg criticizes the Court’s reading of § 318(a) as “wooden,” and reasons that it requires the PTO to spend resources on issues in petitions that have no reasonable likelihood of success. She endorses the reasoning in Justice Breyer’s opinion.

Dissent (Breyer): Justice Breyer would have applied Chevron analysis to find the PTO’s interpretation of § 318(a) reasonable in the circumstances.

KEYWORDS: INTER PARTES REVIEW; INSTITUTION DECISIONS; PARTIAL INSTITUTION; CHEVRON