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16-969 SAS INSTITUTE INC. V. MATAL DECISION BELOW: 825 F3d 1341 CERT. GRANTED 5/22/2017 QUESTION PRESENTED: Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review "shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held? LOWER COURT CASE NUMBER: 2015-1346, 2015-1347
The U.S. Supreme Court case SAS Institute Inc. v. Iancu, 2017 revolved around the issue of patent validity review process under the America Invents Act (AIA). The petitioner, SAS Institute Inc., argued that when a patent claim is reviewed by the Patent Trial and Appeal Board (PTAB), all claims challenged in the petition should be addressed rather than selectively reviewing some claims as was being done by PTAB under Director Andrei Iancu's leadership. The court ruled in favor of SAS Institute with a 5-4 majority decision stating that if PTAB initiates an inter partes review, it must decide on all contested claims presented in the request for review instead of picking and choosing which to evaluate.
In the dissenting opinion for SAS Institute Inc. v. Iancu, Justice Ginsburg argued that the majority's interpretation of the statute was too rigid and failed to consider practical implications. She contended that there is no statutory requirement for the Patent Trial and Appeal Board (PTAB) to address every claim in its final written decision after an inter partes review (IPR). Instead, she suggested that PTAB should have discretion over which claims it addresses based on efficiency and economy considerations. Furthermore, she pointed out that if a patent owner wants a reconsideration of non-instituted claims, they can request another review or appeal directly to Federal Circuit Court under §141(c). Therefore, according to her view, requiring PTAB to rule on all claims would unnecessarily burden both parties involved in patent disputes as well as PTAB itself.