On April 24, 2018, the Supreme Court held that the Patent Trial and Appeal Board (“PTAB”) must address all challenged claims of an instituted Petition in a final written decision. SAS Inst. Inc. v. Iancu, Dir. U.S. Pat. & Trademark Off., No. 16-969, slip op. (U.S. Apr. 24, 2018).  By way of background, in its Petition for inter partes review (“IPR”), SAS sought review of all the claims of ComplementSoft’s software patent.  During the IPR proceedings, the PTAB instituted review on some of the claims, relying on a Patent Office regulation that allowed for “partial institution.”  The PTAB held seven of those claims unpatentable and confirmed the patentability of one claim.  SAS argued to the Federal Circuit on appeal that the patent statute required the PTAB to address all challenged claims in its final written decision.  The Federal Circuit rejected that argument and the Supreme Court granted certiorari.  The Supreme Court disagreed with the Federal Circuit and held that all challenged claims must be addressed in an instituted IPR’s final written decision.  Id.

In its five-four decision, the Supreme Court stated that the plain meaning of the relevant statute, § 318(a), required the PTAB to provide a simple “yes” or “no” answer on whether to institute a petition and did not confer any power for “partial institution.”  Section 318(a) states that “[i]f an inter partes review is instituted and not dismissed under this chapter, the [B]oard shall institute a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . .”  Id. at 4.  The Court specified that the use of the word “shall” meant that the Board did not have the discretion to institute review on only some challenged claims.  Id.  The Court moreover rejected policy arguments noting that “it is this Court’s job to follow the policy Congress has prescribed,” and in this case the Court found the policy clear.  Id. at 10.

As the PTAB begins to implement the Court’s SAS holding, it will be important for practitioners to watch whether the holding causes the PTAB to more carefully scrutinize Petitions for review, given that the PTAB now needs to be prepared to address all challenged claims in final written decisions.

Update: Today (April 26, 2018), the Patent Office issued a Guidance document describing changes to the PTAB’s IPR procedures in light of the Supreme Court’s SAS decision.  The Office will also hold a Chat with the Chief Webinar on Monday, April 30, 2018, at noon Eastern time to discuss the issue.