On April 24, 2018, the Supreme Court of the United States decided SAS Institute Inc. v. Iancu, No. 16-969, holding that when the United States Patent and Trademark Office institutes an inter partes review, it must decide the patentability of all claims that the petitioner has challenged.
Inter partes review is a procedure that allows private parties to challenge previously issued patent claims in an adversarial process before the U.S. Patent and Trademark Office (the Patent Office). A petition for inter partes review may request to cancel one or more claims of a patent as unpatentable. The Director of the Patent Office must decide whether an inter partes review is warranted based on the petition. Before instituting review, the Director must determine that there is a reasonable likelihood that the petitioner will prevail on at least one of the claims challenged in the petition.
Petitioner SAS Institute Inc. (SAS) sought inter partes review of a software patent owned by ComplementSoft. In its petition, SAS alleged that all 16 of the claims in the ComplementSoft patent were unpatentable. The Director concluded that SAS was likely to prevail on at least one of the challenged claims and that inter partes review was therefore warranted. The Director, however, instituted review on only nine of the 16 challenged claims, and denied review on the remaining claims. The question before the Court was whether, pursuant to 35 U.S.C. § 318(a), the Patent Office must decide the patentability of every challenged claim in a petition for inter partes review.
The Court held that the Patent Office must decide the patentability of all challenged claims. The Court relied on the plain text of § 318(a), which states that “[i]f an inter partes review is instituted . . . the [Patent Office] shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” (emphasis added). The Court reasoned that “shall,” as used in the statute, “imposes a nondiscretionary duty” on the Patent Office. It further reasoned that in this context, the use of the word “any” means “every.” The plain text of § 318(a) thus requires the Patent Office to address every claim that the petitioner has challenged.
Justice Gorsuch delivered the opinion for the Court, in which Chief Justice Roberts and Justices Kennedy, Thomas, and Alito joined. Justice Ginsburg filed a dissenting opinion, in which Justices Breyer, Sotomayor, and Kagan joined. Justice Breyer filed a dissenting opinion, in which Justices Ginsburg and Sotomayor joined, and in which Justice Kagan joined except as to Part III-A.