Scarinci Hollenbeck, LLC
The Firm
201-896-4100 info@sh-law.comFirm Insights
Author: Scarinci Hollenbeck, LLC
Date: May 31, 2018
The Firm
201-896-4100 info@sh-law.comIn SAS Institute Inc v Iancu, the U.S. Supreme Court ruled that when the United States Patent and Trademark Office (USPTO) conducts an inter partes review, it must decide the patentability of all challenged claims. The decision follows the Court’s prior ruling in upholding the validity of the entire inter partes review process.
Inter partes review (IPR) allows private parties to challenge previously issued patent claims in an adversarial process before USPTO. The Director of the USPTO may institute a review after determining “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Pursuant to 35 U.S.C. §318(a), the USPTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” at the close of the litigation.
SAS Institute Inc. (SAS) sought review of respondent ComplementSoft’s software patent, alleging that all 16 of the patent’s claims were unpatentable. Relying on a USPTO regulation (37 CFR §42.108(a)) recognizing a power of “partial institution,” the Director instituted review on some of the claims and denied review on the rest. The Patent Trial and Appeal Board’s (Board) final decision addressed only the claims on which the Director had instituted review. On appeal, the Federal Circuit rejected SAS’s argument that §318(a) required the Board to decide the patentability of every claim challenged in the IPR petition.
By a vote of 5-4, the Supreme Court reversed. In an opinion written by Justice Neil Gorsuch, the majority held that the USPTO must decide the patentability of all challenged claims.
In reaching its decision, the Court relied on the plain text of §318(a). “The word ‘shall’ generally imposes a nondiscretionary duty, and the word ‘any’ ordinarily implies every member of a group,” Justice Gorsuch explained. “Thus, §318(a) means that the Board must address every claim the petitioner has challenged.”
The Court also rejected the USPTO’s argument that the Director has the discretion to institute a partial review, concluding that both the text and context strongly counsel against inferring such a power. Justice Gorsuch wrote:
Section 314(a)’s requirement that the Director find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests, if anything, a regime where a reasonable prospect of success on a single claim justifies review of them all. Again, if Congress had wanted to adopt the Director’s claim-by-claim approach, it knew how to do so. See §304. Nor does it follow that, because §314(a) invests the Director with discretion on the question whether to institute review, it also invests him with discretion regarding what claims that review will encompass.
Justice Gorsuch went on to note that the USPTO should raise its concerns about IPR proceedings with Congress. “The Director’s policy argument—that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others—is properly addressed to Congress, not this Court,” he wrote.
The Court’s decision in SAS Institute Inc. v. Iancu will likely impact how both petitioners and patent holders approach IPR proceedings. We encourage businesses to consult with an experienced patent attorney regarding the potential implications for your organization.
Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work at 201-806-3364.
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
The Trump Administration’s new tariffs are having an oversized impact on small businesses, which already tend to operate on razor thin margins. Many businesses have been forced to raise prices, find new suppliers, lay off staff, and delay growth plans. For businesses facing even more dire financial circumstances, there are additional tariff response options, including […]
Author: Brian D. Spector
Business partnerships, much like marriages, function exceptionally well when partners are aligned but can become challenging when disagreements arise. Partnership disputes often stem from conflicts over business strategy, financial management, and unclear role definitions among partners. Understanding Business Partnership Conflicts Partnership conflicts place significant stress on businesses, making proactive measures essential. Partnerships should establish detailed […]
Author: Christopher D. Warren
*** The original article was featured on Bloomberg Tax, April 28, 2025 — As a tax attorney who spends much of my time helping people and companies who have large, unresolved issues with the IRS or one or more state tax departments, it often occurs to me that the best service that I can provide […]
Author: Scott H. Novak
On January 28, 2025, the Trump Administration terminated Gwynne Wilcox from her position as a Member of the National Labor Relations Board (NLRB or the Board). Gwynne Wilcox, a union side lawyer for Levy Ratner, was confirmed to the Board for an original term in 2021 and confirmed again for a successive five-year term expiring […]
Author: Matthew F. Mimnaugh
Breach of contract disputes are the most common type of business litigation. Therefore, nearly all New York and New Jersey businesses will likely have to deal with a contract dispute at least once. Understanding when to file a breach of contract lawsuit and how long you have to sue for breach of contract is essential […]
Author: Brittany P. Tarabour
Closing your business can be a difficult and challenging task. For corporations, the process includes formal approval of the dissolution, winding up operations, resolving tax liabilities, and filing all required paperwork. Whether you need to understand how to dissolve a corporation in New York or New Jersey, it’s imperative to take all of the proper […]
Author: Christopher D. Warren
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!