Supreme Court Rules That Instituted IPRs Must Decide All Challenged Claims

Monday, May 14, 2018

In SAS Inst. Inc. v. Iancu, No. 16-969, 584 U.S. ___ (Apr. 24, 2018), the U.S. Supreme Court, in a 5-to-4 decision, held that certain U.S. Patent & Trademark Office (“PTO”) interpretations and regulations violated the patent statutes.  According to the Court, when the PTO exercises its discretion to institute an inter partes review (“IPR”), it must decide the patentability of all challenged claims.  In reaching its decision, the Court relied on the plain text of the statutes, in particular finding with respect to Section 318(a) that the word “shall” generally imposes a nondiscretionary duty on the PTO and “any” implies every challenged claim.

IPR is a procedure allows petitioners to challenge issued patent claims before the PTO.  The petitioner commences the IPR by filing a petition identify challenged patent claims and challenging the claims over prior art patents and/or printed publications.  If the PTO decides “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), it decides whether to institute review of the petition pursuant to 35 U.S.C. § 314(b).  After proceedings (e.g., discovery, briefing, oral hearing) before the Patent Trial and Appeal Board (“PTAB”), the PTAB “shall issue a final written decision with respect to the patentability of any patent claims challenged by the petitioner.”  35 U.S.C. § 318(a) (emphasis added.)  According to the Court, the PTO, in issuing regulations governing IPRs, incorrectly interpreted the statute as allowing claim-by-claim partial institution of an IPR based on less than all of the challenged claims. 

IPRs are a relatively new procedure for challenging the enforceability of patents and this decision adds clarity to how the IPRs are to be conducted.  If you have a question about IPRs, please contact B & W.